AOL Sues Advertise.com Over Trademark

Generic TM

AOL's Platform-A has sued rival Advertise.com for allegedly infringing on AOL's rights to the names Advertising.com and Ad.com. In papers filed this week in federal district court in Virginia, AOL argues that Advertise.com's name tricks customers into thinking the company is affiliated with the AOL brands Advertising.com and Ad.com. The Web giant is alleging trademark infringement and unfair competition.

"Advertise.com's unauthorized use of the Advertise.com designation with services that are substantially identical and complimentary to those offered by plaintiffs under the Advertise.com and Ad.com marks is likely to confuse, to cause mistake or to deceive," AOL alleges. "Indeed, Advertise.com's unauthorized use of the Advertise.com designation has already caused such confusion."

AOL also complains that Advertise.com's logo is "virtually identical" to that of Advertising.com.

Both companies in this lawsuit about branding have recently changed their names. Last year, AOL changed Advertising.com's corporate name to Platform-A. But the company alleges that it still has trademark rights to Advertising.com and that it has applied for a trademark for Ad.com. The online ad company Advertise.com was formerly called ABCSearch, until earlier this year.

On Monday, Advertise.com filed its own lawsuit in federal district court in California. The company asked that court to issue a declaratory judgment that the company was not infringing on any of AOL's rights. Advertise.com argues that whatever marks AOL owns to Advertising.com are "generic," and therefore, subject to cancellation.

A recent decision involving Hotels.com could support that view. In that case, the U.S. Court of Appeals for the federal circuit ruled that Hotels.com couldn't trademark its name because "hotels" is too generic.

But AOL might be able to prevail here despite that ruling, says trademark attorney Martin Schwimmer, a partner at the law firm Moses & Singer. For one thing, AOL might be able to prove that Advertise.com copied the design of the Advertising.com logo -- which could be protected even if the name of the company is too generic to be trademarked.

In addition, Schwimmer says, the federal court in Virginia can also consider whether Advertise.com is engaging in unfair competition. AOL could potentially prevail on that claim regardless of whether "Advertising.com" is too generic to be trademarked.

advertise.com/aol

1 comment about "AOL Sues Advertise.com Over Trademark".
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  1. Lior Leser from LYL Law Group, August 20, 2009 at 2:45 p.m.

    Good Article. As <a href="http://www.web20lawyer.com">Internet Lawyer</a> I agree with the idea that the issue is likely to come down to unfair business practices. The fact that AOL may not be able to register their trademark, does not mean that they do not have trademark rights in advertising.com. Depending on how advertise.com uses their mark, the confusion caused can be the basis for an unfair business case

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