In Advertise.com, Inc. v. AOL Advertising, Inc., 2010 WL 3001980 (9th Cir. 2010), the Court of Appeals for the Ninth Circuit partially reversed a trial court decision granting AOL an injunction against Advertise.com. In August 2009, AOL – which owns the mark ADVERTISING.COM – filed a complaint and motion for a preliminary injunction against Advertise.com alleging that Advertise.com had infringed AOL's trademark rights. Advertise.com appealed the trial court's decision to grant the preliminary injunction, but it did not contest that part of the preliminary injunction that enjoined it from using any design mark that was confusingly similar to AOL's stylized marks.
On appeal, the Ninth Circuit concluded the ADVERTISING.COM mark was generic . Generic terms are those that refer to the genus of which the particular product or service is a species, i.e., the name of the product or service itself. To determine whether a term is generic, a court determines whether consumers understand the word to refer only to a particular producer's goods or whether the consumer understands the word to refer to the goods themselves. On the other hand, a mark that is descriptive describes the qualities or characteristics of a product. Generic terms cannot be valid marks subject to trademark protection, whereas a descriptive mark can be valid and protectable if it has acquired secondary meaning.
The Ninth Circuit first examined the component parts of ADVERTISING.COM and determined ADVERTISING and .COM were both generic terms. Merging the terms together yielded a generic term as well. The court indicated that AOL accurately could describe itself as an “advertising.com” or “advertising dot-com.” AOL’s references to cases in which a seemingly generic URL mark was ruled non-generic did not persuade the court.
Additionally, the multitude of other domain names incorporating the word “advertising” (Advertise.com cited 32 such examples) convinced the court that AOL’s mark is generic. The court addressed AOL’s remaining arguments as inapplicable or unpersuasive and reversed the district court’s grant of an injunction against Advertise.com to the extent it enjoined Advertise.com from using the designation and trade name ADVERTISE.COM or any other designation or trade name that is confusingly similar to AOL's ADVERTISING.COM marks.
If you require assistance navigating a trademark dispute or registering your trademark, you should consult counsel experienced in handling trademark matters