Handing AOL a defeat in its
lawsuit against the online ad company Advertise.com, the 9th Circuit Court of Appeals on Tuesday vacated an injunction that had banned Advertise.com from using its name.
AOL had argued that
Advertise.com was infringing the trademarked term "Advertising.com," but the appellate court ruled that the term appeared to be too generic to be trademarked. Furthermore, the court said, adding a
".com" to a generic term will only rarely result in a valid trademark.
The 9th Circuit had earlier
stayed a trial judge's injunction against Advertise.com, but Tuesday's decision vacated the injunction more permanently. AOL will still have the opportunity to present evidence against
Advertise.com at trial, but the appellate court said that AOL's chances of prevailing were slim. "It is not inconceivable but certainly highly unlikely that consumer surveys or other evidence might
ultimately demonstrate that AOL's mark is valid and protectable," the court wrote.
The ruling stems from a lawsuit filed by AOL against Advertise.com last year. AOL argued that Advertise.com was
tricking companies into believing that it was affiliated with AOL's Advertising.com. Advertise.com countered that whatever marks AOL owns to Advertising. com are generic and subject to cancellation.
Two years ago, AOL changed Advertising.com's corporate name to Platform-A. But the company alleges that it still has trademark rights to Advertising.com.
Last year, U.S. District Court
Judge Valerie Baker Fairbank in the central district of California issued a preliminary injunction requiring Advertise.com to stop using the name as well as design elements similar to Advertising.com.
Advertise.com did not challenge the portion of the order requiring it to stop using those design elements.
The online ad company Advertise.com was called ABCSearch until 2009.