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Ninth Circuit Holds 'Advertising.com' Mark Likely to Be Found Generic
In Advertising.com, Inc. v. AOL Advertising, Inc. et al., 2010 U.S. App. Lexis 16054 (Aug. 3, 2010), the Ninth Circuit Court of Appeals reversed and vacated a district court's preliminary injunction, holding that the district court erred in finding that AOL had demonstrated a likelihood of success in showing that its ADVERTISING.COM mark was descriptive and not generic.
AOL owns trademark registrations covering certain stylized representations of the mark ADVERTISING.COM. During prosecution of those marks, the PTO requested that AOL disclaim the standard text version of ADVERTISING.COM to obtain registration of the stylized representations of that term. AOL refused, arguing that the standard text version was distinctive and protectable. AOL's registrations eventually issued without the requested disclaimer.
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