In a case before the U.S. Court of Appeals for the Ninth Circuit, Plaintiff on appeal Advertise.com, Inc. (Advertise.com), appealed a preliminary injunction order previously entered by the U.S. District Court for the Central District of California which barred Advertise.com from using the domain name www.Advertise.com for its web services.
The full opinion; Advertise.com, Inc., v. AOL ADVERTISING, INC., FKA Platform-A, Inc.; AOL INC., Case No. 10-55071 (9th Cir. August 3, 2010).
Defendants in this suit are AOL ADVERTISING, INC., FKA Platform-A, Inc.; and AOL INC., (collectively as ‘Defendants’ or ‘AOL’). AOL was the original plaintiff in this lawsuit and at the district court level it filed a complaint alleging trademark infringement against Advertise.com in the Eastern District of Virginia. That case was transferred to the Central District of California where District Judge Valerie Baker Fairbank entered a preliminary injunction against Advertise.com.
At issue in this appeal is the whether the district court correctly determined that AOL was likely to succeed on the merits, more specifically, whether the district court correctly determined that ‘ADVERTISING.COM’ is a descriptive mark (and thus protectable) rather than a generic term.
Because ADVERTISING.COM is a registered trademark, “a presumption of validity places the burden of proving genericness upon the defendant,” Advertise.com. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir. 1999).
Importantly, the court placed heavy consideration on the fact that both Advertise.com and AOL offer services that fall under the genus of “online advertising” or “internet advertising.” This acts as a strong bar to any claim that Advertise.com could make alleging that its use of ‘Advertise.com’ does not create consumer confusion between it and Defendant on appeal AOL’s ‘ADVERTISING.COM’ registered trademark. Likely with this in mind, Advertise.com did not even contest whether its use of the ‘www.Advertise.com’ and Defendant’s ‘www.Advertising.com’ were confusingly similar. The sole issue on appeal is over the validity of the permanent injunction.
A quick aside to the history of AOL’s ‘ADVERTISING.COM’ trademark;
AOL is the current federally registered trademark owner of marks covering specific stylized representations of ‘ADVERTISING.COM.’ However, back when AOL’s applications for those registrations were pending before the United States Patent and Trademark Office (USPTO), the USPTO requested that AOL disclaim the standard text version of ‘ADVERTISING.COM’ to obtain registration of the stylized representations of that term. AOL balked at this order instead of complying. It maintained that although it did not claim exclusive rights to the term ‘ADVERTISING,’ the standard texts version of ‘ADVERTISING.COM’ was sufficiently distinctive and protectable. Apparently the USPTO accepted this line of reasoning as it eventually issued the registrations without its requested disclaimer of the standard text version.
On appeal, Advertise.com argued the district court abused its discretion in ordering the injunction because the text mark ‘ADVERTISING.COM’ is generic
Generic v. Descriptive marks;
Writing the opinion for the Ninth Circuit Court, Judge B. Fletcher noted the differences between generic and descriptive trademarks and stated;
“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. Id. at 1147. “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.” Yellow Cab Co. v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005). A descriptive mark describes the qualities or characteristics of a product. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). 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.” Filipino Yellow Pages, 198 F.3d at 1147. “Whether a mark is generic is a question of fact.” Yellow Cab Co., 419 F.3d at 929 (quotation marks omitted).”
“With this context in mind, we consider whether ADVERTISING.COM conveys only the “genus of which [AOL’s] particular [service] is a species” or whether it is descriptive because it “directly describe[s] the qualities or features of the product.” One Indus., LLC v. Jim O’Neal Distrib., 578 F.3d 1154, 1164 (9th Cir. 2009) (quotation marks omitted).”
After this background, Judge B. Fletcher began consideration of the descriptive v. generic quality of AOL’s ‘ADVERTISING.COM’ mark and noted that the first step is to consider the impression conveyed by “advertising” and “.com” taken separately. Fletcher then conceded that “advertising” is generic and that “.com” is also generic and refers to any online commercial organization or business otherwise connected to the internet. The Judge assigned significant weight to the finding that separately, the terms are generic.
The Ninth Circuit then considered whether when joined together, “advertising” and “.com” would result in a distinctive mark or whether continued evidence of genericness would rebut the presumption of validity (noted above, ‘ADVERTISING.COM’ is a registered trademark and as such has a presumption of validity);
After considering the joined terms under the “who-areyou/what-are-you” test, Fletcher stated that the generic name of the product answers the question and this strongly suggests that ‘ADVERTISING.COM’ is generic.
Other support for a finding of genericness comes from evidence of how the mark has been incorporated into other domain names. Fletcher writes that “Advertise.com points to thirtytwo separate domain names that incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.”
Concluding, Fletcher writing for the Ninth Circuit wrote;
“It is not inconceivable but certainly highly unlikely that consumer surveys or other evidence might ultimately demonstrate that AOL’s mark is valid and protectable. However, on the record before us, we conclude that the district court abused its discretion in determining that Advertise.com could not meet its burden of rebutting the presumption of validity and that AOL was, therefore, likely to prevail on the merits.”
Accordingly, the Ninth Circuit reversed the district court’s ruling and vacated the preliminary injunction enjoining Advertise.com from using “the designation and trade name ADVERTISE.COM or any other designation or trade name that is confusingly similar.”
More information on this case and trademark registration and infringement laws in general can be found here;