(CN) – AOL can’t claim exclusive ownership of its registered Advertise.com trademark, the 9th Circuit ruled, because the mark is generic and doesn’t confuse Internet users about the origin of the services offered.
Advertise.com, Inc. appealed a district court’s ruling determining that the domain name “Advertise.com” infringed on AOL’s registered trademark, also named Advertise.com.
The court barred the corporation from using the name, ruling that it was descriptive, not generic, and that AOL owned the rights to it. The court based its ruling on the conclusion that Web users could be confused about who was providing the services.
In its appeal, Advertising.com argued that the name is generic and so AOL, although a registered owner of the mark, does not have the exclusive right to use the mark.
The three-judge panel agreed. Both “advertising” and “.com” are generic terms, the Pasadena-based panel ruled.
“A mark is not descriptive merely because it conveys some minimal information about a product or service; if all it ‘describes’ is the common name of the product or service, it is not protectable as a trademark,” Circuit Judge Betty Fletcher wrote.