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 tdorros@mrllp.com”””
…boring….
I think the perils are actualy the benefits. Depends how you look at it. If you operate on a Generic.com then you “shouldn’t” have to worry about someone giving you a headache over use of the generic term. Unfortunately in practice it doesn’t seem to hold true as the more valuable your generic term to more likely a target it is. You still end up having to pay the same ip lawyers even though you cant even get a TM.
I guess at least you get to save the money, time and effort from having to file a TM in the first place and you are essentially guaranteed to always get to keep your brand name as long as you can afford to fight for it, just like the owner of a non-generic TM.
I guess you could say that having a generic.com is like having a trademark without having to have a trademark.
thanks for this real life look and perspective, and thanks mike for posting.
on this statement;
“if your end goal and real desire is to ensure your company has secure intellectual property rights over the name. ”
i think your mis-speaking here, Advertising.com has secure intel property rights in Advertising.com – but no one wants secure rights, they was predatory and more than they have earned, they want to grab one piece of pie, and then own the whole pie and control others, your are right that a word is a word, your case shows a word is not ANOTHER word. – in this case advertise.com
words are singular and different, and different words are different. its a pipe dream that by tricking the patent office into giving you a pseudo generic term, you go home thinking ive locked up everything around it. – but thats what entrepreneurs want out of IP lawyers and they hint its possible…
is just like with SEO, people dont want the seo they have earned, they want a free lunch or super special benefits.
contentment and IP law dont seem to go hand in hand, if it were only protection that drove WIPO cases, theyd be 50-60% less – but everybody wants extension into others.
thanks for this real life look and perspective
page howe
Interesting post! In my view, Advertising.com and Advertise.com are two different names. AOL didn’t have any right to Advertise.com even if they COULD be trademarked.
In an appeal, the names are reversed? Advertise.com, Inc. v. AOL Advertising, Inc.
That’s confusing. I thought it is the same case, so should be labeled the same. AOL went after Advertise.com, not vice versa. I had to read and reread and research. Reversing the who-vs-who makes it seem it is separate from the first case. So, the first case was over and done with. This is its own lawsuit, to find that “Advertising” is generic, and change the decision of the first case.
So Amazon.com is trademarked with respect to books, like Apple with respect to computers.
Wonder what would happen to a scientific tome on the Amazon and picture books about the Amazon if they advertised under, Amazon Books?
What was there to defend.
Give me the TLD EMD & I will build the brand name.
It’s reverse domain hijacking, because Advertise and Advertising are two completely different words, even if they DID dole out trademarks. It’s an embarassment to the court.
As JP notes – it is “like having a trademark without having to have a trademark”.
The point of a trademark like “Purina” is that when you see that on a dog food label, it signifies whatever association you might make between “Purina” and whatever your impression is of the quality or desirability of that type of dog food. But what is on pretty much every can of every brand of dog food is “dog food”.
You can say “Purina” to my dog, and she’ll look at you funny. You say “dog food” within ten feet of her, and she’ll start hopping around paw at your arm to get you into the kitchen. If she could type, I know what site she’d go to.
For decades, Martindale Hubbell was a publisher of big thick paper volumes of lawyer directories. Pretty much the only people that used it to find lawyers were other lawyers looking for specialists or local counsel, or corporate general counsel doing the same. They developed a rating system and a number of other features to find appropriate lawyers, provided you had access to one of their big thick paper books.
At some point years ago, there had to have been a conversation about buying lawyers.com, and it was at the time probably considered something of a speculative idea in a very tradition-bound and somewhat stodgy outfit. After all, they had a huge reputation in “Martindale Hubbell”, but even I’m not sure as I type this whether I’m getting the spelling of “Hubbell” right. I’m pretty sure that there was someone there who probably figured the domain name was a waste of money.
So, a few days ago I saw a television commercial for lawyers.com, and it’s amazing what they’ve done with that domain name, considering that their main business until fairly recently was publishing big thick paper things. It is a transition that yellow page directory publishers, IMHO, largely flubbed. I would bet that they never dreamed how much of a cash cow that domain name would turn out to be. If anyone is looking for a lawyer that needs to advertise to find business, it is the go-to domain name.
So the “peril” here is that, no Martindale can’t, and shouldn’t, claim a monopoly in the word “lawyers”, and other people can certainly use the word “lawyers” in domain names. But I’m not sure I’d characterize that as a “peril”. If you have a category-killer domain name, you already have a huge competitive advantage. Believing that you can leverage that advantage beyond competing with others in that category, to the conceit that you own the category itself to the exclusion of competition, is simply delusional.
“In an appeal, the names are reversed? Advertise.com, Inc. v. AOL Advertising, Inc.”
It can be.
Typically, if the case at trial was “A v. B” and B appeals the decision, then on appeal it is “B v. A” since it is B who is the one bringing the proceeding at the appellate court. If A appeals the trial decision, then it would be “A v. B” on appeal.
Wow! Thanx for that, Mr. Berryhill!
@ John Berryhill said: “Believing that you can leverage that advantage beyond competing with others in that category, to the conceit that you own the category itself to the exclusion of competition, is simply delusional.”
Do you imply AOL out of line to go after Advertise in the first place? It looks like reverse domain hijacking to me! That is what it seems like you mean, because even the owner of Books.com, the numbers is what tells the story. You’re implying, if the owner of Books.comwent after every domain with “books” in it. What about the singular? That is a good analogy of the above case. If Books.com went after Book.com for trademark infringement, because they are confusingly similar.
Is MobileTech trademarkable? I have MobileTech.tv and MobileTechTV.com – I hope MobileTechTV is trademarkable, because I intend to trademark it. Right now, it is just displaying the marks.
What is “mobile tech tv”? Never heard of it.
Ok to show tm (R) mark with no registration filed? Thought this was no-no in us.
I think it should be pointed out that this is a trademark lawsuit, not a UDRP. There is no domain hi-jacking or interest in a domain name.
The case says that there was consumer confusion. Advertising.com has been around a long time and all of a sudden Advertise.com launched with a similar website and logo. It supposedly caused user confusion from the start at the ad:tech conference where Advertise.com announced their launch and new site/logo. Trademark infringement claims don’t always involve the actual domain name itself.
Interesting the attorney didn’t mention this.
very well written. thanks for sharing this guest post
“Do you imply AOL out of line to go after Advertise in the first place?”
It depends on what for. As commented above, a lawsuit can be based on several things at once, and there was some concern about the logo being used, and not just the domain name.
@VSN, Mobile Tech .tv™ covers news about mobile devices and the converging technologies which enhance each device, such as: dual screen, flexible display, or bendy, touch, and mobile dtv, and multi screen delivery, including devices which do not strictly rely on multitouchscreen, but offer a combination with stylus! 🙂
Thanx, @MHB, for supplying forum to check in what is happening news-wise. The news is excellent. This article and comments gave me the idea to take a screen shot of MobileTech.com, a parked page, and save as evidence that MobileTech.tv is developed first! They can’t shoot my website down. I’m paranoid something I invest time and energy, without lots of capital, could become a target of unscrupulous thieves.
Plus, I redirected the dot com to the dot tv.
Reading theDomains, it’s like signing up for http://www.coloft.com in Santa Monica, where people enjoy shared office space, which has a printer and a fax machine, but the real value is they can bounce ideas off one another and sometimes collaborate . . . Everybody’s doing different things – it’s fun!