Intellectual Property Law

Ninth Circuit Concludes Court Erred in Finding "Advertising.com" is Descriptive

By Michael Atkins

One of AOL Advertising’s (top) and Advertise.com’s design marks

AOL Advertising, Inc., sued Advertise.com, Inc., for trademark infringement. At issue were AOL’s registered design marks for ADVERTISE.COM. Advertise.com defended on the ground that the marks are generic and, therefore, are not protectable as trademarks.

AOL filed in the Eastern District of Virginia, which transferred the case to the Central District of California.

The Central District of California granted AOL’s motion for a preliminary injunction. It enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’S ADVERTISING.COM marks” or using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” In doing so, it found that ADVERTISE.COM is descriptive rather than generic.

Advertise.com appealed the portion of the order that enjoined Advertise.com from using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” For some reason, it did not appeal the remainder of the order.

On Aug. 3, the Ninth Circuit reversed and vacated the subject portion of the injunction.

“This does not appear to be the ‘rare case' in which the addition of a [top-level domain] to a generic term results in a distinctive mark,” the court found. “Rather, the record before us demonstrates that Advertise.com is likely to rebut the presumption of validity and prevail on its claim that ADVERTISING.COM is generic. How, then, did the district court reach the opposite conclusion? Examining its decision, we conclude that it did so due to an error of law and therefore abused its discretion in granting the injunctive relief challenged here.

“The district court’s analysis of whether ADVERTISING.COM is generic is brief and never explicitly states the standard the court applied. The explanation of its conclusion that ADVERTISING.COM is descriptive, however, convinces us that it did not apply the correct legal standard to the facts before it. The court’s reasoning appears in a single sentence that reads ‘The term ‘advertising’ describes the services that AOL offers, and the ‘.com’ either indicates a commercial entity, use of the internet in association with the mark, or describes the internet-related nature of AOL’s services.

“We conclude that the district curt did not correctly apply the legal standard for determining whether a mark is generic. Even if we credit the district court’s rationales as factually accurate — i.e., if we assume that the addition of ‘.com’ serves the three identified functions — ADVERTISING.COM still conveys only the generic nature of the services offered. That ‘.com,’ when added to a generic term, ‘indicates a commercial entity’ does not suffice to establish that the composite is distinctive, much as AOL would not have created a protectable mark by adopting the designation ‘Advertising Company.’”

The case cite is Advertise.com, Inc. v. AOL Advertising, Inc., __ F.3d __, 2010 WL 3001980, Nos. 10-55069 and 10-55071 (9th Cir. Aug. 3, 2010).

Full post as published by Seattle Trademark Lawyer on August 09, 2010 (boomark / email).