This is a guest post written by Torin A. Dorros, Esq., who defended Advertise.com against a lawsuit for trademark infringement among other claims arising from AOL.com over its ownership of Advertising.com
The article is being published unedited and it’s an excellent article that all domainers should read, maybe twice as it quite relevant not only to this case but all generic domain names.
There’s A Reason They’re Called Domain “Names”
The Perils of Selecting Generic Names For Your Online Company
We are frequently approached regarding the possibility of establishing a new company, and subsequently, to trademark the company’s name. Very often the company is an online or Internet company of one form or another and, not uncommonly, the contemplated name is a dot-com or “.com” name, i.e. the name of the company is nothing more than a domain name followed by “Inc.” or “LLC”—such as Example.com, Inc. There are significant potential advantages and disadvantages, especially in the intellectual property world, in selecting this type of dot-com name. You simply need to be of aware of them and select your company name understanding the relevant issues.
On August 3, 2010 in the case of Advertise.com, Inc. v. AOL Advertising, Inc. the United States Court of Appeals for the Ninth Circuit solidly and firmly continued its clear position that generic terms are not to be provided trademark protection, as anything to the contrary “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” More specifically, the Court held that combinations of generic terms with generic top level domains (gTLDs) such as “.com” will remain generic and unprotectable under trademark law where the combination simply describes the very goods and services provided, i.e. merely points to genus of the goods and services provided.
Before the Court was the question of whether the word ADVERTISING.COM—to which AOL, Inc. and AOL Advertising, Inc. (“AOL”) claimed rights, even though AOL only has design/logo marks relative to the term ADVERTISING.COM—was generic. The District Court granted AOL’s motion for a preliminary injunction and enjoined Advertise.com, Inc. from the use of both the word and name ADVERTISE.COM and its logo, finding that ADVERTISE.COM was confusingly similar to ADVERTISING.COM and that ADVERTISING.COM was not generic. Advertise.com, Inc. appealed and the Ninth Circuit found that the evidence before it strongly indicated that ADVERTISING.COM was generic, warranting no trademark protection, with AOL highly unlikely to prove otherwise. Therefore the Court reversed the District Court’s preliminary injunction preventing Advertise.com, Inc. from using the designation ADVERTISE.COM.
While AOL essentially argued that merely by slapping a gTLD on any generic term—ADVERTISING + .COM to form ADVERTISING.COM—should provide the combined term with the right to trademark protection, because (1) adding .COM refers to the online nature of the goods and services provided, and (2) providing such terms with trademark protection would prevent competitive cybersquatting, poignantly the Court noted that AOL’s arguments fail for the simple reason “that this is the peril of attempting to build a brand around a generic term.”
The ADVERTISING.COM brand, and indeed the <advertising.com> domain name were established and/or promoted by AOL for the provision of online advertising. As the Ninth Circuit highlighted, AOL “consistently refers to the type of services it offers under the ADVERTISING.COM mark as ‘online-advertising services’.” Such alone was significant in the Court’s decision determining the evidence strongly supported a finding that the term ADVERTISING.COM is generic. However, the Court went further, examining the impact providing trademark protection over ADVERTISING.COM type marks would have in the domain name/Internet arena. Significantly the Court highlighted that there existed a multitude of other domain names using the term “advertising.com” in their domain name, and that if the Court were to deem ADVERTISING.COM anything but generic, such would provide AOL with a means of establishing a monopoly over the advertising domain name world. As the Court wrote:
Notwithstanding that only one entity can hold a particular domain name, [an argument on which AOL relied] granting trademark rights over a domain name composed of a generic term and a TLD grants the trademark holder rights over far more intellectual property than the domain name itself. In addition to potentially covering all combinations of the generic term with any TLD (e.g., “.com”; “.biz”; “.org”), such trademark protection would potentially reach almost any use of the generic term in a domain name. For example, AOL might bring suit, alleging infringement of its ADVERTISING.COM mark, against any one of the owners of the thirty-two domain names [highlighted by Advertise.com in the appellate record] using some form of “advertising.com.” This would make it much more difficult for these entities to accurately describe their services. ‘To allow trademark protection for generic terms, . . . even when [they] have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.’ Surgicenters, 601 F.2d at 1017 (quotation marks omitted). A major advantage that AOL would get from trademark protection of ADVERTISING. COM is to foreclose competitors from using a vast array of simple, easy to remember domain names and designations that describe the services provided.
Importantly, the Ninth Circuit was not indicating that there can be no situation where the combination of a generic word with a gTLD or a simple domain name or dot-com mark cannot be afforded trademark protection. Merely the Court held that one cannot assume to receive trademark protection for generic gTLD combination marks where the mark does nothing more than point to the genus of the services provided.
So what does this all mean for online businesses or others attempting to trademark a “.com” or domain name brand? Merely this: be aware of the perils of selecting a generic name for your company and domain name if your end goal and real desire is to ensure your company has secure intellectual property rights over the name. There is certainly nothing wrong with selecting a generic name and/or generic domain name, however one must understand that it will merely be a name and carry no trademark protection. The value, however, of having the public being able to easily remember your company name, or domain name, because it is the generic term for those goods and services, may outweigh any need for trademark protection in pursuing your goal of reaching profitability, or notoriety as the preeminent provider of those goods and services. One notable example is Hotels.com, L.P. Its HOTES.COM mark was held to be generic, yet the company and its <hotels.com> website are widely known by the general public. In fact, while its HOTELS.COM mark remains generic without the right to trademark protection (In re Hotels.com, 573 F.3d. 1300, 1304 (Fed. Cir. 2009)—such, however, does not mean that the company has not created a well recognized brand. Sometimes it is simply better to focus on business and brand development, rather than intellectual property disputes over generic terms. Selecting a generic name can be beneficial; it simply won’t provide you with trademark protection.
So choose wisely.
Michelman & Robinson, LLP, a full service firm with offices in California and New York. Torin A. Dorros is a member of the firm’s Advertising, Media, and Marketing, and Intellectual Property and Entertainment departments and practices out of its Los Angeles and New York offices. He can be reached at email@example.com”””