In yet another finding by the USPTO dated march 21st 2011, AOL.com application to trademark Ad.com was rejected.
“In the present case, the proposed mark is generic because it consists of the generic term ‘AD” combined with the top level domain (TLD), “.com”, which is perceived by the public to indicate an Internet address. The compound term AD.COM is thus generic of the applicant’s services. Therefore, the mark AD.COM is unregistrable on the Supplemental Register or on the Principal Register under Trademark Act”
“The applicant has provided evidence in order to prove that the AD.COM has acquired distinctiveness, however, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances.”
“The applicant has provided evidence that shows the public has shortened the applicant’s internet address and company name, Advertising.com to “AD.COM” and thus because of the use of the public to describe Adverting.com as AD.COM it has acquired distinctiveness and thus a secondary meaning.”
“This argument is not convincing because the function of Advertising.com also includes advertising services.”
“In the applicant’s own evidence it states “Applicant owns the largest digital marketing platform in the United States, offering a comprehensive suite of marketing solutions, including display advertising, behavioral marketing, promotional marketing, managed affiliate placements, video marketing, and search engine marketing via a suite of solutions powered by industry leading technologies and marketed under marks that include AD.COM and the federally-registered mark ADVERTISING.COM, which is commonly truncated to AD.COM by third parties”. This statement proves that AD.COM is still associated with advertising services and thus has not acquired a secondary meaning.”
“In view of the foregoing, the refusal under Trademark Act 2(e)(l) is continued and made FINAL because the proposed mark is generic for the applicant’s services. Moreover, the Section 2(f) evidence submitted by the applicant is insufficient to overcome the generic refusal.”
When the buyer of ad.com refused to complete the sale due to trademark claims of AOL, myself and Mr. Berryhill debated the issue for what seems for days on end.
It now seems clear, and certainly not surprising that Mr. Berryhill was right and I was wrong.
AOL claim to Ad.com was just smoke and mirrors