Trademark examiner refuses Ad.com trademark again.
AOL’s continued battle to trademark a domain name it doesn’t even own has hit another roadblock. On June 21, a U.S. Patent and Trademark Office examiner refused the trademark for Ad.com on the grounds that it’s generic.
The USPTO previously refused the mark because Ad.com was merely descriptive of AOL’s services. In response, AOL amended the application to add a claim of acquired distinctiveness.
In refusing the application on the basis of its generic nature, the examiner noted:
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services…Generic terms are by definition incapable of indicating a particular source of the goods and/or services, and cannot be registered as trademarks and/or service marks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are…Thus, applicant’s claim of acquired distinctiveness under 15 U.S.C. Â§1052(f) is insufficient to overcome the refusal because no amount of purported proof that a generic mark has acquired secondary meaning can transform it into a registrable trademark.
The addition of .com is generally considered just an internet address and is often disregarded. This is a similar problem that 1-800-Mattress had trying to trademark Mattress.com. But at least in that case it actually owned the domain name it was trying to trademark.