Building a brand around a generic domain name may create trademark headaches.
You usually find the real juicy stuff in a company’s annual report in the footnotes. That’s why I like to read every part of court cases, too. In the recent U.S. Court of Appeals case of Advertise.com vs. AOL Advertising (Advertising.com), the court noted the challenges of creating a brand around a descriptive and generic domain name in footnote 6:
Somewhat incredibly, AOL attempts to argue that it is Advertise.com who is proposing a per se rule, claiming that the result that Advertise.com urges would cast all marks composed of a generic term and a TLD into the public domain. Advertise.com proposes no such rule that a generic term combined with a TLD will always be generic, and we do not adopt such a rule here.
AOL also raises a concern that refusing to protect such marks will result in “parasiteâ€ marks such as “addvertising.comâ€ diverting business from marks like ADVERTISING.COM. The simple response is that this is the peril of attempting to build a brand around a generic term.
The court isn’t ruling out that a generic domain name can be trademarked. In this particular case, the court points out that “an advertising dot-com” can conceivably refer to multiple entities because of the meaning of “a dot com”.
When any online advertising company, including AOL’s competitors, is asked the question “what are you?â€ it would be entirely appropriate for the company to respond “an advertising. comâ€ or “an advertising dot-com.â€ See id. at 1151. Likewise, asking one of AOL’s competitors “Could you refer me to an advertising dot-com?â€, one would hardly be surprised if they offered their own services. See Yellow Cab Co., 419 F.3d at 929. We see strong evidence of this in the common use of “.comâ€ to refer to internet businesses.
Still, this court and many other courts have ruled that it’s very difficult to trademark a generic term dot-com, and this can only be done in very specific circumstances.