The U.S. Court of Appeals for the Ninth Circuit vacated a preliminary injunction finding that the district court committed an error of law when it concluded that adding “.com” to the end of a generic term created a valid trademark worthy of a preliminary injunction. v. AOL Advertising, Inc., Case No. 10-55069 (9th Cir., Aug. 3, 2010) (Fletcher, J.).

In August 2009, AOL filed a complaint against alleging that infringed AOL’s trademark registrations covering certain stylized representations of the mark ADVERTISING.COM. Upon motion by AOL, the district court enjoined from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’s ADVERTISING.COM marks” and from using the trade name ADVERTISE.COM or any other name confusingly similar to ADVERTISING.COM. The district court based its decision, in part, on the grounds that AOL was likely to show that the ADVERTISING.COM marks are descriptive (as opposed to generic) and therefore protectable under trademark law. appealed.

On appeal, AOL argued that the terms “advertising” and “.com,” while generic independent of each other, were only descriptive when combined. The Ninth Circuit, analyzing the AOL mark by posing the questions “who-are-you/what-are-you” concluded that while ADVERTISING.COM did not indicate who ran the entity or where it came from, the name did indicate what the entity did. “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’ or ‘an advertising dot-com.’” The court also noted the use of “advertising” and “.com”, as a combination in a dictionary to refer to internet advertising, as well as 32 separate domain names that used both “advertising” and “.com” (including “,” “,” and “”) as evidence that the mark ADVERTISING.COM is generic. The Ninth Circuit cited to the Federal Circuit’s decision In re (see IP Update, Vol. 12, No. 8) in support of a finding of genericness when the elements of the mark are highly generic, even in the face of substantial rebuttal.

The Court rebuffed AOL’s argument that the addition of “.com” to “advertising” created a descriptive mark by noting that if the court were to adopt AOL’s logic, it would be creating a per se rule that the addition of “.com” to the end of any word would result in a protectable mark.