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Lesson from AOL: Beware of Generic Trademarks

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Photo by Keith Ramsey on Flickr

Photo by Keith Ramsey on Flickr

The Ninth Circuit recently found the trademark registration for “ADVERTISING.COM” by America Online (AOL) too generic for legal protection. AOL wanted to stop the name and similar design of Advertise.com, and while the lower court found the trademark to be descriptive and protected, the appellate court disagreed.

Instead, the Ninth Circuit turned to the so-called “who-are-you/what-are-you” test in coming to its conclusion. In answering this question, the court found that AOL is “an advertising dot-com.” The court stressed how common it is these days to refer to a business that does online transactions as a “dot-com,” which is even now included in the American Heritage Dictionary with the example of “an advertising dot-com.”

As the court wrote: “That the use of ‘advertising’ and ‘.com’ as a combination to refer to internet advertising is commonplace enough to be used as an example in a dictionary definition strongly suggests that ADVERTISING.COM is generic.”

Moreover, noted the court, adding “.com” to “an otherwise unprotectable term will only in rare circumstances result in a distinctive composite.” AOL had tried to argue that their name fell into the “rare circumstances” category like STEELBUILDING.COM and PATENTS.COM, which previous courts have found to be worthy of trademark protection, but the court was not persuaded.

In sum, the court didn’t buy what AOL was selling in this instance and declined to adopt “a per se rule that the addition of a TLD [top-level domain] to a generic term results in a protectable mark.”

So to those of you considering trademarks, take note that courts may not offer protection for generic terms with a dot-com added.

To learn more about registering a trademark, visit LegalZoom’s trademark center.

H/t Eric Goldman’s Technology & Marketing Law Blog.

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August 19th, 2010 at 9:59 am

Posted in Intellectual Property

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