ADVERTISING.COM, Generic or Descriptive?
AOL owns trademark registrations for stylized representations of the mark ADVERTISING.COM. The parties agreed that the genus of the services AOL offered under these marks is online or Internet advertising. AOL sued Advertise.com claiming that it infringed AOL's trademark rights by using ADVERTISE.COM and a stylized version of that mark that was confusingly similar to AOL's stylized ADVERTISING.COM marks.
AOL moved for a preliminary injunction, which the District Court granted, enjoining Advertise.com from using any design mark that is confusingly similar to AOL's stylized ADVERTISING.COM marks and from using ADVERTISE.COM or any other name confusingly similar to ADVERTISING.COM. The District Court concluded that AOL was likely to show that the ADVERTISING.COM marks--including the standard text mark--are descriptive and therefore protectable.
Advertise.com appealed to the Ninth Circuit, arguing generally that the standard text mark ADVERTISING.COM is generic and therefore not protectable. It did not appeal the part of the preliminary injunction enjoining Advertise.com from using any design mark that was confusingly similar to AOL's stylized ADVERTISING.COM marks.
The Ninth Circuit disagreed with the District Court's conclusion that AOL was likely to prevail on the merits and found (after a somewhat lengthy analysis) that the record demonstrated that Advertise.com was likely to rebut the presumption of validity afforded AOL's ADVERTISING.COM mark and prevail on its claim that the mark was generic. The Ninth Circuit thus reversed and vacated that portion of the preliminary injunction that enjoined Advertise.com from using the name ADVERTISE.COM or any other name confusingly similar to AOL's ADVERTISING.COM marks.
The case cite is Advertise.com, Inc. v. AOL Advertising, Inc., Nos. 10-55069, 10-55071 (9th Cir. Aug. 3, 2010).
