“Who Are You/What Are You” Test for Generic Trademarks

The Ninth Circuit Court of Appeals explained the difference between descriptive, but enforceable, registered marks and generic non-enforceable marks in Advertise.com, Inc. v. AOL Advertising, Inc., Case No. 10-55069 (9th Cir. Aug. 3, 2010) (available here). The Appeals Court reversed a preliminary injunction, finding that advertising.com, although registered as a stylized mark (AOL’s USPTO registered mark available here), was generic because it answered the question “What are you.” The 9th Circuit applied the “who-are-you / what-are-you” test. “‘A [descriptive] mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’ ‘Who vouches for you?’ But the [generic] name of the product answers the question ‘What are you?’ Applying this test strongly suggests that ADVERTISING.COM is generic. When any online advertising company, including AOL’s competitors, is asked the question ‘what are you?’ it would be entirely appropriate for the company to respond ‘an advertising. com’ or ‘an advertising dot-com’ [company].” Slip Opn. p. 11171, quoting Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146-47 (9th Cir. 1999)(quotation marks omitted).

During its efforts to register advertising.com, the PTO had requested that AOL disclaim the standard text version of ADVERTISING.COM to obtain registration of the stylized representation of that term. AOL refused, maintaining that although it did not claim exclusive rights to the term “advertising,” the standard text version of ADVERTISING.COM mark was distinctive and protectable. AOL’s trademark registrations eventually issued without disclaimers.

The 9th Circuit reviewed the district court’s decision enjoining Advertise.com from using any design mark or logo that was confusingly similar to the stylized forms of AOL’s ADVERTISING.COM marks (see  www.advertising.com ) and from using the trade name ADVERTISE.COM (see www.advertise.com) Advertise.com was not enjoined from using its website address “advertise.com.” p. 11168. “A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Marilyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 876-77 (9th Cir. 2009). Further, there is a presumption of validity when dealing with a mark registered on the principal register that places the burden of proving genericness on the defendant. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir. 1999).

The Court did not seem to find a difference between “advertise” and “advertising.” “When any online advertising company, including AOL’s competitors, is asked the question ‘what are you?’ it would be entirely appropriate for the company to respond ‘an advertising. com’ or ‘an advertising dot-com’” company. p. 11171.

“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. ‘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.’ A descriptive mark describes the qualities or characteristics of a product. 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.’‘Whether a mark is generic is a question of fact.’” (citations omitted). p. 11169.

“Accordingly, our first step is to consider the impression conveyed by ‘advertising’ and ‘.com,’ taken separately. ‘Advertising’ is concededly generic and is defined as ‘the action of calling something (as a commodity for sale, a service offered or desired) to the attention of the public esp. by means of printed or broadcast paid announcement.’ Webster’s Third New International Dictionary 31 (2002). The term ‘.com’ is a top-level domain indicator (‘TLD’), In re Oppendahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004), and reflects an online commercial organization or refers ‘generically to almost anything connected to business on the internet.’ Taken separately, it is clear that ‘advertising’ and ‘.com’ reflect only the genus of the services offered.” p. 11171.

There is Federal Circuit precedent which supports the conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark. See In re Hotels.com, 573 F.3d 1300, 1304 (Fed. Cir. 2009) (HOTELS.COM); In re 1800MATTRESS.COM IP, LLC, 586 F.3d 1359, 1361-62 (Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007) (LAWYERS. COM).; contra, see In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005).

As a result, this decision continues the trend indicating that generic domain names are valuable properties of domain name owners.

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