“””Advertise.com, appealed the district court’s entry of a preliminary injunction barring it from using a designation or trade name that is confusingly similar to Appellees’ (“AOL”) ADVERTISING.COM mark.
The district court enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’s ADVERTISING.COM marks” and from using the designation and trade name ADVERTISE.COM or any other name confusingly similar to ADVERTISING.COM. Advertise.com was not enjoined from using its website address “advertise.com.”
The lower court found that AOL was likely to show that the ADVERTISING.COM marks, including the standard text mark, are descriptive and therefore protected under trademark law.
“”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, we look to 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.”
“A descriptive mark 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.”
“Whether a mark is generic is a question of fact.”
“”The parties likewise appear to agree that the genus of these services is “online advertising” or “internet advertising.”
“”AOL’s brief, for example, consistently refers to the type of services it offers under the ADVERTISING.COM mark as “online-advertising services” and refers to the “onlineadvertising genus.”
“”In addition to reflecting the nature of AOL’s services as described by the district court, taking “online advertising” as the genus reflects how AOL and third parties have portrayed the services offered under the mark.””
“”“We begin with our familiar “who-areyou/what-are-you” test: “A mark answers the buyer’s questions `Who are you?’ `Where do you come from?’ `Who vouches for you?’ But the [generic] name of the product answers the question `What are you?'”
“Applying this test strongly suggests 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.”
“Likewise, asking one of AOL’s competitors “Could you refer me to an advertising dot-com?”, one would hardly be surprised if they offered their own services. “
“”There is extensive Federal Circuit precedent in support of our conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark.”
“The Federal Circuit has repeatedly affirmed the Trademark Trial and Appeal Board’s (“TTAB”) findings that marks similar to ADVERTISING.COM are generic.“
“Further support for finding ADVERTISING.COM generic is evident in how the mark has been used in other domain names.”
“Advertise.com points to thirty two separate domain names that incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.” The Federal Circuit has found such evidence is sufficient to prove genericness under a clear evidence standard when the elements of the mark are highly generic, even in the face of substantial rebuttal evidence.”
“Notwithstanding that only one entity can hold a particular domain name, 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 combination’s 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.”
“”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.”
“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.”
“”A mark is not descriptive merely because it conveys some minimal information about a product or service; if all it “describes” is the common name of the product or service, it is not protectable as a trademark.
“Rather, a descriptive mark conveys the “qualities or characteristics of a good or service.”
“We have already stated that we create no per se rule against the use of domain names, even ones formed by combining generic terms with TLDs, as trademarks. ”
“We reverse the district court and vacate the preliminary injunction to the extent that 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.”
“Because Advertise.com did not appeal the injunction as to its use of the stylized marks or logos that the district court found to be confusingly similar to AOL’s stylized marks, we leave that portion of the injunction undisturbed.”
Finally a good decision from the Appellate Court. The analysis of the difference between “generic” and “distinctive” words constituting trademarks is an excellent one that all Domain Investors should be cognizant of for future (and Past) registrations.
right decision
the big companies think they can buy everything with their money
Brilliant! Once again, generics stand the test of TM. Now if we could only get UDRPs on generic names dismissed with prejudice as well, we’d be even again.
Ed
Unfortunately UDRP don’t seem to follow federal court rulings
AOL going downhill……
you got no mail!
These cases can not have conclusions, really. “advertising”, the generic dictionary term, has been around a long time…a long time before the “branding” of “advertising”. So which is more important or “legal”. Hard to say. Two systems are marked against each other, “dictionary” common sense people vs the “branding” business people. It actually comes down to who has the final “say” or power, so to speak. In this case, the final say was a more common sense one.
So what is going to happen now to the Ad.com fiasco? This was the same threat that caused the back-out last year (or 2008?) My guess is that this strengthens their case for protection against AOL.
Chip
That of course is the BIG question.
For the Buyer the ultimate legal answer would seem to be AOL is going to lose if the buyer of Ad.com went ahead and bought the domain and sued him.
From the financial side of the transaction it would be interesting to know how much advertise.com has spent so far fighting AOL to date
This is such a frivolous case to begin with. And the Ad.com piece even more unwinnable. AOL is corporate bad … all the way to its core. A truly contemptuous company.
Excellent decision.
“So what is going to happen now to the Ad.com fiasco?”
AOL never had a legitimate claim in the first place, and that was the point. Their “AD.com” tm registration application has been refused as generic, after it took a trip through the USPTO Commissioner’s office, and now their “advertising.com” claim has met the same fate.
Neither of these results required, and did not prospectively require at the time, any action by the ad.com domain registrant or any party purchasing from him.
“From the financial side of the transaction it would be interesting to know how much advertise.com has spent so far fighting AOL to date”
It doesn’t matter. AOL’s claim was ab initio invalid.
Anyone can send threatening correspondence to anyone else about anything at any time. That’s a simple fact of life. AOL never had a claim here, and the owner of ad.com did not have to spend a dime for these two results:
1. The USPTO refused the ad.com registration application as generic, on its own, after the application took a trip through the Commissioner’s office.
and
2. This decision further reinforces the USPTO’s determination with respect to the ad.com application and, again, did not cost the ad.com domain registrant a penny. It was going to happen anyway.
With respect to AOL’s claim, there is no “there” there, and there never was.
Excuse me for getting all Zen Buddhist about this, but sometimes the most effective action is no action at all. This was that sort of situation from the get-go.
“…sometimes the most effective action is no action at all.”
I wish I had taken this advice when investing my 401K portfolio over the past 5 years.
John
Regarding attorney’s fees
“t doesn’t matter”
Unless your the one paying the bill
“Unless your the one paying the bill”
Maybe I wasn’t clear. The “liability” of having to defend against a meritless claim is always present, in every transaction. It’s not something that anyone could warrant against. Even a breach of warranty would require a breach, of a warranty, but that wouldn’t come into play until the breach had manifested itself into a deprivation of title.
For example, Able and Beatrice divorce, and Beatrice gets the car in the divorce judgment. Beatrice sells the car to Charlie. Able comes to Charlie and says, “Hey, that was my car.” Charlie may have to defend his title, but he doesn’t have a breach of warranty claim unless and until Able prevails against him. But Able won’t prevail, because he lost the car in the divorce decree. That was the pre-ordained result of Able’s action against Charlie.
Charlie may incur an expense in dealing with Able’s meritless claim, but that does not give Charlie a claim against Beatrice for selling him the car. Beatrice didn’t breach any warranty to Charlie. Likewise Beatrice doesn’t have a claim against Able simply because Able is a jerk.
That is what I mean by “a simple fact of life.” Jerks do jerky things. There is no insurance or guarantee against that, nor is it ever required.
So what is the effect of the AOL ruling for Supplemental Register trademarks like MOVIETICKETS.COM (reg. # 3270610) after 5 years of exclusive and continuous use?
SDM
I’m not sure any.
Tractor Supply has been able to get other domains based off it long term trademark on a generic term
http://www.thedomains.com/2010/07/16/a-pure-trademarked-generic-tractorsupply-mobi-taken-in-a-wipo/
So couldnt ad.com sue AOL for ruining the sale and the reputation of the seller?
Although this was not the usual 9th Cir. panel, it the court has stated, again, and very explicitly, there are no “per se” rules on domains. If you have a trademark, then you can enforce (protect) it. If not, then you take your chances.
AOL had no TM here on the textual representation of advertising.com, and hence no support for an injunction.
No TM, no protection. 9th Cir. +1
AOL had no TM on the textual representation of advertising.com and hence no support for an injunction.
This was not the usual 9th Cir. panel but it didn’t matter. Attempts like AOL’s are doomed to failure.
No TM, no protection.
“Domainers” have nothing to feel victimised about.
Let the trademark offices decide what is and is not a TM.
@shahram – That would be exactly the correct outcome, that AOL are penalized for wrecking the legitimate interests & opportunities of those involved with AD.com. AOL never had a case and their unjustified actions grossly interfered with the business of other companies. I don’t know how protracted such a process might be, but AOL’s actions were so abusive (and without merit) that they need to be made an example on principle alone.
If AOL had had as a foundation any real legitimate justification, then the case & decision served a true prupose. But they were rolling the dice, clearly, to the huge detriment of someone else. Actions like that should be penalized in the extreme = huge damages award.
That is a stretch.
I don’t see “libel nor difamation”…
(Pending better legal opinion)
How was AOL abusive?
Domo
I know Mr. Berryhill’s going to jump in and disagree but I said all along that Ad.com, Directi the Buyer and Moniker the broker should have all sued AOL, instead of each other, get a declaratory judgment saying they had no claim to the domain as well as a suit for damages for interference with a contract.
“should have all sued AOL, instead of each other, get a declaratory judgment saying they had no claim to the domain as well as a suit for damages for interference with a contract”
Should have sued AOL – for what? For writing a letter with an invalid claim?
The buyer should have sued AOL for “interference with a contract”? The buyer is going to plead, “The letter from AOL with an invalid claim made me breach my contract”. And get what damages for that? The opportunity to perform the contract?
With all due respect, Mike, that just makes zero sense. But let’s play out your scenario where everybody sues AOL for… something. Okay, taken as given.
Now, let’s say in your scenario, “everybody” wins, and AOL loses. What happens then? What does the judgment say, and what does everybody do next?
In an “interference with contract” claim, you understand that there is an underlying breach of contract, yes? That’s not a claim that the buyer and seller are going to be co-plaintiffs on. Even if you wanted to structure it as an interference claim, the seller is the plaintiff against (a) the buyer which breached and (b) the party which interfered in the performance. If you are bringing an interference claim, you don’t get to “join” with the other party to the contract.
If A and B have a contract, and B breaches because of some idiotic action by C, then if “A and B” bring an “interference” action against C, doncha think C’s defense pretty much writes itself?
But, again, I’m trying to wrap my arms around what you think the result of this “joint action” would be?
If your answer is:
1. A declaration that C’s claim is invalid.
2. A declaration that the contract between A and B was lawful and enforceable.
Then the result is that A and B are going to be ordered to perform the contract.
You seem to be missing the point that, without lifting a single finger on the part of A and B, C’s claim has been confirmed as having been invalid from the start. So what, in your mind, is the impediment to performance of the contract?
What was it that anyone was going to get from AOL? If the answer was “a spanking to the effect their claim was no good”, AOL has gotten that. Twice now.
AOL’s claim was facially invalid from the outset. That was apparent to me within one minute of reading their letter, and should likewise have been apparent to any rational person.
But if you want a live example of a repeat performance, try this one on for size. In the Zuccarini case involving disposition of the domain names remaining in custody in California, the plaintiff and the receiver have agreed to auction those names at TRAFFIC in October.
Well, let’s look at today’s docket, shall we….
“Zuccarini opposed the Auction Motion. Additionally, Zuccarini contacted the
proprietors of both the T.R.A.F.F.I.C. Domain Conference & Expo and Latona’s
Brokerage & Auction House and threatened them with legal action if they worked with the Receiver.”
Your point is that if the Zuccarini names show up at TRAFFIC in October for auction, then all of the winning bidders get a free pass if they find out afterwards that Zuccarini thinks he has a claim, nobody has to perform, and everybody can then sue Zuccarini for… something. Yes?
Let the games begin…..
John
I’m not going to beat the AOL thing to death.
I do believe the AOL letter which rwas sent to the buyer before he completed the purchase was for one purpose only, to stop the buyer from completing the sale.
If that isn’t interference with a contract I don’t know what is.
Whether the buyer rightly or wrongly got scared off by the letter and the threat of spending hundreds of thousands to defend the “invalid claim”, AOL should have been held responsible and should have been bought into the suit.
As far as Zuccarini is concerned I believe there is no way those domains will be auctioned off at TRAFFIC South Beach
Oh, I agree. In fact, take a look at the filing date of the AOL “ad.com” application and the first Moniker press release about it going to auction at TRAFFIC the first time. The entire affair is transparent as glass.
My point is that the buyer can’t sue AOL for being “scared off”, “rightly or wrongly” as you put it. If the buyer is going to say, “AOL made an invalid claim which caused me not to perform”, can’t you see the fundamental silliness of that position? The direct response is “why were you scared off by an invalid claim”?
The dynamics just don’t translate into “everybody should have sued AOL instead”. AOL may indeed eventually be held liable on one theory or another, but to sue for interference with contract, someone is going to have to establish that the contract was, in fact, breached. It’s just silly for the breaching party to claim “damages” for its own breach.
So, changing channels a bit. If the Chatroulette people assert their claim of confusing similarity with Camroulette (about which there was high moral dudgeon here), then everybody can go home because there is no contract anymore. Right?
And…. here we go:
http://domainnamewire.com/2010/08/05/zuccarini-threatens-latonas-and-traffic-over-planned-auction/
“Zuccarini Threatens Latona’s and TRAFFIC Over Planned Auction”
Boom… nobody has to actually buy the names if they are “sold” at the auction.
John
And once again here is my prediction and remember you heard it here first, with or without this threat, Zuccarini domain will NOT be auctioned off at a TRAFFIC show.
we know that aol filed for their advertising.com tm immediately before the auction of a “competing” name. the day before? the same day? i forget.
question:
when aol sent the letter of intimidation, and through the period where up to where they sought the intial injunction, the uspto had not yet given any indications as to success/failure of the application?
fortran
I think the ruling from the trademark office denying AOL’s application on advertising.com came months after the ad.com sale and subsequent threats
that’s what i thought.
and i suspect the recipient of the letter was unable to distinguish a legitimate claim of TM infringement from a bogus one.
advertise.com is a total rip off. They send fake hits to your site. The supposedly sent sent 20,000 hits to my website in 20 mins. They took a 100 bucks from me within mins. My site offers everything for free yet not one person left the front page. Buyerbeware youll get more out of your money just ripping it up!!!!
Great decision that should set precedence over future similar cases!
Congrats to Advertise.com
Hey, so what about MOVIETICKETS.COM, isn’t this a very similar situation ???
This would be a great discussion.
(^-^)
Sueing is a big market in America.