AOL Loses Trademark Protection for Advertising.com After Suing Advertise.com for Infringement

Gareth S. Lacy

Zillow, GoDaddy, Yahoo—Ever wonder why so many businesses choose weird names for their Web sites? One benefit of gibberish names is that they are easier to trademark than general terms like “hotel,” “lawyer,” or “mattress.” In Advertise.com, Inc. v. AOL Advertising, Inc., the Ninth Circuit recently issued the sixth decision in a line of cases highlighting the difficulty of obtaining trademark protection for domain names that contain general terms.

In Abercrombie & Fitch, Co. v. The Hunting World, Inc., Judge Henry Friendly articulated the four widely accepted classes of trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. Arbitrary or fanciful marks are inherently distinctive and presumptively protected by trademark law, while generic terms are not protectable.

A generic term is one that refers to the “genus” or class of which the particular product is a “species.” For example, “apple” is a generic term for the fruit and therefore orchards cannot trademark the term “apple.” But “apple” is not a species of the genus “computer”—using “apple” as a species of “computer” falls within Judge Friendly’s “arbitrary or fanciful” category and is presumptively protectable by trademark law.

Credit: National Institute of Health

In Advertise.com v. AOL Advertising, Inc., AOL sued Advertising.com for trademark infringement and obtained an injunction. Advertising.com appealed to the Ninth Circuit on grounds AOL’s trademark was generic and therefore invalid. The court imposed a presumption that AOL’s trademark was valid because it was registered. The burden was on defendant Advertise.com to prove “genericness” through substantial evidence. Advertise.com met this burden by showing consumers widely accept that an “advertising dot com” is a Web site that provides online advertising services.

Adding “.com” to an otherwise unprotectable term will only, in two rare circumstances, create a distinctive composite capable of trademark protection. First, some top-level domains (i.e., “.com”) indicate a source that renders a generic mark registrable. The example give by the USPTO would be the addition of “.peter” to the generic “clothes” to form “clothes.peter,” which would be a registrable mark. Second, a term that is not distinctive could acquire additional meaning when a top-level domain is added. For example, the Federal Circuit held “Steelbuilding” was generic, but the addition of “.com” created a registrable trademark. In 555-1212.com, Inc. v. Communication House Intern., Inc., the addition of “.com,” to the generic “555-1212,” created a potentially protectable non-generic trademark, “555-1212.com.”

The first step of the analysis in Advertise.com v. AOL Advertising, Inc. was to separately consider the “impression conveyed” by the terms “advertising” and the top-level domain, “.com.” The court quickly concluded the public understands these terms to be generic. The second step was determining whether the composite of these two terms created a distinctive mark as in 555-1212.com or In re Steelbuilding.com. The court distinguished Steelbuilding.com on grounds that the services provided on that Web site went far beyond the sale of “steel buildings”—the addition of “.com” conveyed a unique and unexpected characteristic to an otherwise brick-and-mortar operation. In contrast, the Advertise.com services were, at their core, online advertising and the addition of “.com” did not mitigate this aspect.

Advertise.com, Inc. v. AOL Advertising, Inc. found In re Hotels.com was more analogous than In re Steelbuilding.com. In re Hotels.com examined the “focus” of the claimed services to determine whether the proposed mark was generic for those services. In particular, the service of Hotels.com was “making reservations and bookings for temporary lodging” and “Hotels.com” was, indeed, generic for those services. Substantial evidence that Hotels.com was generic included a large number of similar “hotel” domain names and dictionary evidence that “hotels” and “.com” were generic terms. Advertise.com, Inc. v. AOL Advertising, Inc. also gave a weight to evidence that 32 separate domain names incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.”

A generic term categorizes by conveying information about the nature or class of an article. This is often known as the “who-are-you/what-are you” test. Advertise.com, Inc. v. AOL Advertising, Inc. employed this test to determine whether the composite was a distinct mark:

A mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from? ‘Who vouches for you?’ A generic name of the product answers the question ‘What are you?’ Applying this test strongly suggested that ADVERTISING.COM is generic. When any online advertising company, including AOL’s competitors, is asked the question ‘what are you?’ it would be entirely appropriate for the company to respond ‘an advertising.com’ or ‘an advertising dot-com.’

In other words, a mark is generic when consumers use the mark to refer to the general kind or genus of goods or services the Applicant seeks to trademark. The two-step inquiry is: (1) What is the general kind of goods or services at issue; and (2) Does the general public understand that applied-for mark to refer to the general kind of goods or services at issue? For example, In re 1800Mattress.com concluded mattresses were the goods being sold and the public would view “Mattress.com” as “no more than the sum of its constituent parts.” The Federal Circuit also found no evidence that consumers view “.com” as shorthand for “comfort” to create a non-generic composite term.

Advertise.com, Inc. v. AOL Advertising, Inc. is the sixth decision in a line of cases that make it difficult for businesses to obtain trademark protection for domain names that include general terms for the services offered. In this month’s issue of Landslide, Thomas L. Casagrande has an excellent survey of five other key cases litigating Patents.com, Steelbuilding.com, Lawyers.com, Hotels.com, and Mattress.com. Casagrande argues the Federal Circuit’s decision to apply a “genericness” analysis conflicts with controlling precedent requiring analysis on “descriptiveness” grounds.

In summary, marks that embrace an entire class of products or services—not all of which necessarily emanate from the same source—are generic. The evaluation of a proposed trademark requires considering the mark as a whole and the potential distinctiveness derived from connection with a top-level domain.

For more information on how USPTO makes decisions regarding trademark registration of domain names, take a look at the Trademark Manual of Examining Procedure.



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