9th Cir. Smacks Down AOL’s Advertising.com Trademark as Likely Generic — Advertise.com v. AOL

[Post by Venkat]

Advertise.com, Inc. v. AOL Advertising, Inc., Case No. 10-55069 (9th Cir; Aug 3, 2010).

The Ninth Circuit handed AOL a preliminary trademark loss, finding that ADVERTISING.COM is likely generic for internet advertising services.

Background: AOL owned trademark registrations for ADVERTISING.COM, and brought trademark claims against Advertise.com. The district court found AOL’s mark to be descriptive (and thus protectable) and granted AOL’s request for an injunction, barring Advertise.com’s use of a confusingly similar design (to AOL’s ADVERTISING.COM) and also enjoining Advertise.com from using the designation and trade name ADVERTISE.COM. Advertise.com appealed the latter portion of the district court’s order.

Discussion: The crux of the appeal – as framed by the Ninth Circuit – was whether AOL’s mark was descriptive, as the district court concluded, or generic. The parties agreed that AOL offered “online advertising” or “internet advertising” services.

The court initially concludes that taken individually, “advertising” is generic. AOL argued that when considered together, the mark should be viewed as distinctive. The court wasn’t persuaded. The court first looked to the “who-are-you/what-are-you” test and noted that AOL (or this particular division) was “an advertising dot-com.” The court also noted the rule that the addition of .com or another TLD “to an otherwise unprotectable term will only in rare circumstances result in a distinctive composite.” (See discussions of Hotels.com (TTABlogĀ®) and Mattress.com (MediaPost) for recent cases on this.) AOL unsuccessfully tried to argue that this was one of those rare circumstances.

AOL also argued that the addition of a TLD alters the analysis because only one entity can hold the rights to a domain name at any time – i.e., adding a .com could turn an otherwise unprotectable term into a protectable one, because only one entity could practically use the TLD version of the term. Not surprisingly, the court was unpersuaded by AOL’s argument that “a per se rule that the addition of a TLD to a generic term results in a protectable mark.” As the court notes, the rule proposed by AOL would grant the domain name owner greater rights than the domain name – i.e., it would potentially allow them to go after the other TLD versions, which would be a bizarro result.

Finally, AOL argued that refusing to protect these types of marks would result in parasite marks, such as “addvertising.com,” which would divert business from “advertising.com.” The court’s reaction to this:

this is the peril of attempting to build a brand around a generic term.

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It’s not necessarily the end of the road for AOL and its mark. This ruling comes at a preliminary stage, so AOL may put forth evidence to win the day. I’m skeptical, but it’s possible.

AOL knew its mark was weak at best. The PTO requested a disclaimer of the standard text version of the mark. Although AOL was able to register the stylized version of the mark without a disclaimer, it abandoned its attempt to register the standard text mark. Which is one aspect of the ruling I found puzzling. Since AOL didn’t have a word mark, could the stylized version of the mark support issuance of an injunction over use of the words? I didn’t think this was the case, but the court didn’t really touch on this at all.

One interesting part of the opinion was the discussion about how “dot com” is a generic way of describing an internet business in ordinary conversation:

When any online advertising company . . . is asked the question “what are you?” it would be entirely appropriate for the company to respond . . . “an advertising dot-com.” . . . . We see strong evidence of this in the common use of “.com” to refer to internet businesses. For example, the American Heritage Dictionary defines “dot-com” as “of or relating to business connected on the Internet: dot-com advertising.” [Ouch – rough for AOL that the dictionary chose to use this particular example to illustrate the definition!]

This has potential to affect many domain names. Domain names that are generic for the services offered are on shaky ground to begin with, but this passage will not help in efforts to secure trademark protection.

At the end of the day, getting a trademark over a .com term is of little use (at least the .com part), and if the underlying mark is weak, the addition of .com doesn’t do much for you and may even work against you.

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