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.
