If You Have A Generic Domain Name, Don't Expect Trademark Protection On It
from the but-does-that-matter? dept
I remember, when first learning about trademark law, thinking how bizarre it was that having your name be considered “generic” was a bad thing. After all, when your brand became synonymous with the product you were selling (think Kleenex, Xerox, Band-Aid etc.) it meant that you had really dominated the product category. Except… if you’re a lawyer. Because the fear, of course, is that if your brand becomes generic, you lose the trademark, and then suddenly others can make use of that brand that you worked so hard to build up. I’m still not convinced that’s really a problem if you’re a savvy business person, but it’s the way things are.
However, as something of “natural” proof of this, just look at how much of a gold rush there was in the early dot com era for “generic” dot com domain names. Everyone involved in those businesses just knew why this was important. They believed that by having those key generic terms, “books.com,” “pets.com,” and even “sex.com” that you would be one of the first places people would go, even if they didn’t know who you, as a company, were. Of course, it actually didn’t turn out that way for many players who ended up with those domains. A lot of the early companies who had “great” domains faded pretty quickly. Execution matters more than just a good name.
And, of course, this whole generic business really gets in the way of that backwards trademark view, where having your name be generic is “bad.” For example, in a recent lawsuit, AOL learned that its advertising.com domain name isn’t really valid as a trademark because of its generic nature. In fact, the court notes that if people are asked about a company, it’s perfectly reasonable to describe it as “an advertising dot com.” I also like how the court smacked down AOL’s claim that without getting a trademark on advertising.com it would take business away from the company:
this is the peril of attempting to build a brand around a generic term.
Exactly. If you want the advantages of building around a generic term, you also have to realize there are some trade-offs, and one is that you don’t get to trademark it. However, as we noted when a similar ruling came down last year against hotels.com, it’s not clear how much this really matters. It only matters if you overvalue the trademark. The domain itself is still unique and the brand is still unique. So does the trademark really even matter?