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
“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.”
That’s one of the best things I have read in a long time!!! Awesome decision for generics.
If the decision went the other way they would probably start claiming rights to anything with “ad” in it. ie. carad.com, boatad.com, jobad.com, realestatead.com, etc, etc……
Best Regards.
So they have the largest digital media platform. That’s what everybody says. I’d guess it’s google.
Steve
Agree nice decision
what that means?
a) no one can own the Ad.com TM or …
b) the Ad.com TM is already owned by other?
A just decision. A logical outcome. AOL have been on the wrong side of this story for years now.
so now Directi.com owner can go ahead and follow their agreement which they did not fulfill, or probably, REGRETTING….they should not have backed off.
What do you say Mike?
Hello Mike,
A.O.L. Knows they desperately need to expand their Brandable business arms. You cannot blame them for trying. We like the decision though.
A.O.L. has finally awaken to marketing Strategies that will build their Business Model to be more competitive. Snooze you lose, especially in the online world.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
guespost
I guess Directi could go ahead and buy it now without threat of AOL but I’m not sure they will or if this ruling changes the pending litigation.
We know that Directi went with Media.Net for the product they were going to use ad.com for so they don’t need the domain.
Second I think you have to look at the facts and circumstances of the case at the time of the auction.
“Second I think you have to look at the facts and circumstances of the case at the time of the auction.”
AOL didn’t have a trademark at that time, either. In fact AOL had filed the application in response to Moniker’s announcement of the first time that ad.com went to auction. The only reason AOL filed the application, in other words, was to attempt to interfere with the auction itself. Now, anyone can file for TM registration of anything that is going into the next TRAFFIC auction, if they want to. It still doesn’t change the terms to which all parties agreed when they participated in the auction.
AOL doesn’t have a trademark now, and they didn’t have one then either.
John
Which is why AOL should have been sued at the time for as you say:
“to attempt to interfere with the auction itself.”
I believe the suit is about representations and disclosures that were or were not made at the time of the auction and whether claims against the domain, rightly or wrongly were disclosed.
(hit submit too soon)
“We know that Directi went with Media.Net for the product they were going to use ad.com for so they don’t need the domain.”
…which is, of course, irrelevant to the commitment they made to buy the name at the auction. If I agree to buy your car, and don’t go through with the deal, the fact that I then go and buy some other car doesn’t change our agreement in the least. It certainly also doesn’t change our deal if I say “the engine in your car is broken” when, in fact, there was never anything wrong with the engine in the first place.
Just because you had a nosy neighbor shouting “the engine is broken” from his yard across the street when I came to pick up the car, is not a reason for me to say, “I’m not buying the car, because your neighbor says the engine is broken.”
The engine in this car is not broken, and was never broken. It was a false excuse to breach the deal.
“Which is why AOL should have been sued at the time”
I think you full well understand that AOL is not directly responsible for the breach of contract here. AOL doesn’t owe the seller a dime and their defense would simply be that the buyer is solely responsible for the buyer’s breach.
The alternative is to sue both AOL and the buyer, but it was a foregone conclusion that AOL’s TM claim was going to fall apart on its own. That was apparent from day one.
What, in your mind, is to be gained by suing AOL?
John
As you said yourself AOL interfered in the contract.
IF the buyer says we were ready to buy the domain until AOL contacted us threatening to sue the pants off of us, then yes someone should have brought them into the suit.
Since when is interference with a contractual relationship grounds for liability and resulting damages?
I’m not sure I understand your second question.
What was at issue in the sale contract was the sale of the domain name, and not it’s sale for any particular use. AOL was claiming, falsely, that they had rights in ad.com for advertising. That has nothing whatsoever to do with the sale of the domain name. Even iF Aol had a claim here, it would only extend to a particular use of the domain name. Are you now saying that every name at auction is warranted for a particular use?
AOL never said “you can’t sell this domain name”, nor did they prevent the buyer from performing. They would defend on that basis. I still don’t see what you think is gained by the seller suing two defendants instead of one. Normally, you go to secondary liability theories when there is some reason that the primary party responsible is not worth suing. Maybe you know something about Directi’s finances that nobody else does?
At some point, you are going to have to be consistent about what happened here. There was no valid reason not to go forward with the sale. None. Zero. Zip. I can’t see why you insist that the cost to the seller of litigating that point should be doubled by suing two parties, when it is clear who screwed the seller here. How much should it cost to have someone keep their word?
But, oh, if some kid in Florida breaches a sale to the tune of some $300, then…
John
My understanding was AOL didn’t say “don’t go through with the purchase but if you do we are going to sue the crap out of you”, is actionable when it is used by the buyer not to follow through with a purchase.
Who is more responsible for and what portion the buyer or AOL has in the defaulted transaction is an issue for a court, but only if someone drags AOL in.
So when your threatened with being forced to spend more in attorney fees to fight AOL then the cost of the domain, AOL should have been brought in to the case by someone.