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?

Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    MrWilson, Aug 10th, 2010 @ 9:45pm

    I'm still waiting for someone to explain why trademark infringement is such an issue unless your product has all the effectiveness and uniqueness of a placebo.

    If you make a better product, consumers will recognize that and buy it. Why does it matter if someone with a clearly inferior product calls theirs kleenex too. They can't perfectly duplicate the product and they can't perfectly duplicate the packaging.

    You are only saved by your quality and innovation.

    Then again, maybe I answered my own question. No one wants to innovate. Innovation is something you pay the marketing team for.

     

    reply to this | link to this | view in thread ]

  2.  
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    Anonymous Coward, Aug 11th, 2010 @ 12:19am

    I think trademark infringement is supposed to protect from blatant ripoffs. Such as if your knockoff tissues used the kleenex logo on it. This actually sounds like a useful legal setup. Of course, lawyers arent satisfied until they have reduced the law to absurdity, in this case the doctrine of genericalized trademarks which nobody even has a problem with until they are brainwashed otherwise.

     

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  3.  
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    dnball (profile), Aug 11th, 2010 @ 1:38am

    Generic terms

    You're conflating two issues:

    [1] The inherent right of all marketplace participants to promote their product or service by calling it what it is [i.e., by naming it using words in their dictionary, "generic" sense]. Trademark law cannot permit, for example, one apple farmer to own the exclusive right to use the word "Apple" when promoting the sale of his apples because that would inhibit the sale of apples by other apple farmers.

    [2] The public's interest in efficient communication through its use of words or terms previously used as trademarks but which are no longer trademarks because the trademark owner PERMITTED its competitors to use the same word or term to brand their version of the product. This is "genericide."

    The former trademark owner may have expressly abandoned its mark or may have lost its exclusive rights in its mark through very poor enforcement efforts. Either way, if lots of folks selling the same product call the product by the same name then the law assumes the public may as well and so the word or term joins our society's luxurious lexicon.

    A mark does NOT become generic merely because the public uses the mark as the generic name for the thing. The public nearly universally asks for a KLEENEX rather than a facial tissue -- which pleases Kimberly-Clark to no end and who can, nonetheless, still enforce its KLEENEX trademark against all other folks who sell facial tissue.

    A mark only becomes generic if the mark owner allows competitors to brand their version of the product using the same mark.

     

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  4.  
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    Red Monkey (profile), Aug 11th, 2010 @ 3:04am

    Re:

    " Why does it matter if someone with a clearly inferior product calls theirs kleenex too?"

    It matters because after awhile, people start thinking anything labelled "kleenex" is inferior. When they see your superior kleenex, they think "ugh, I remember last time I blew my nose with that stuff...".

     

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  5.  
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    Red Monkey (profile), Aug 11th, 2010 @ 3:06am

    Re:

    What are you talking about? Generic trademarks aren't enforceable. What's absurd about that?

     

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  6.  
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    Red Monkey (profile), Aug 11th, 2010 @ 3:08am

    why trademark matters

    "The domain itself is still unique and the brand is still unique. So does the trademark really even matter?"

    A trademark would matter. If you had one one "advertising.com", you could block a confusingly similar mark like "advertise.com".

     

    reply to this | link to this | view in thread ]

  7.  
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    abc gum, Aug 11th, 2010 @ 4:44am

    Re: ftfy

    I thought trademark was supposed to protect the consumer from blatant ripoffs.

     

    reply to this | link to this | view in thread ]

  8.  
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    Christopher Meatto (profile), Aug 11th, 2010 @ 6:32am

    all about knocking competitors out of search engine

    First, I think it shocked most attorneys that the trial court held in favor of Advertising.com. For me, close to an embarassment for the legal profession.

    The real fight is to get rid of competitor names that would tend to rank high on a Google search.

    The legal rhetoric is confusion, but the game is SEO.

     

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  9.  
    identicon
    Anonymous Coward, Aug 11th, 2010 @ 8:15am

    Re: Re:

    It matters because after awhile, people start thinking anything labelled "kleenex" is superior. When they see your inferior kleenex, they think "wow, I remember last time I blew my nose with that stuff...".

     

    reply to this | link to this | view in thread ]

  10.  
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    Anonymous Coward, Aug 11th, 2010 @ 9:24am

    Re: Re:

    The fact that it makes lawyers respond with their nuclear arsenals whenever the trademark threatens to get genericalized

     

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  11.  
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    Red Monkey (profile), Aug 11th, 2010 @ 9:54am

    Re: Re: Re:

    Oh, OK.

    They pretty much have to or the client will be very mad. A TM going generic is bad news, although it's good in a way because it means you must have been pretty successfull

     

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  12.  
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    Andrew Rosener, Aug 11th, 2010 @ 4:48pm

    Generic Domain Names - Still Reign King

    Pretty much ALL of the people who got in early with generic keyword domains made a killing unless they got out too early. If you look at any example of a "category killer" domain name which is developed into a business today, it is a major player for that industry. Those generic domain names continue to increase in value perpetually. We just sold Pizza.net - it represents of the top 5 .NET sales of all time. Insurance.com just sold for $36 Million. A single word generic domain name is the most powerful tool you can have on the internet. Trust me, I own thousands of them! You can see examples on our site at: http://www.mediaoptions.com

     

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  13.  
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    Caitlin - BrandBucket, Aug 26th, 2010 @ 11:07am

    Great examples! I never thought of that Band-Aid brand -- they are bandages, that is just the brand name.

     

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  14.  
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    Ken, Feb 1st, 2014 @ 1:49pm

    Let's say there is a trademark for "isee". Can someone register isee.com but use it as "I see"?

     

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  15.  
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    Sarandeep Kaur (profile), Jul 31st, 2014 @ 3:02am

    Trademark Genericide

    Hi Mike Masnick your post is amazing. It is very interesting and helpful to. Thank you for your valuable thoughts.
    Trademarks are face of your business and also a marketing tool. World’s most famous and big brands selected a brand name and a special trademark for their businesses. Registering of trademark enables the customer to differentiate the goods and services offered by the manufacturers. A trademark identifies the source of goods and services. A trademark ensures the experience of consistent quality. Trademark provides an effective advertisement. As it is important to register a trademark for your business like that registering a trademark for your blog or any movie title is also important.
    Trademark Genericide with a famous adage and it goes like – too much of anything is good for nothing. When a brand name becomes too popular and people start using it very frequently for a product or a particular task then the manufacturer of the product loses his products relevancy in market place. When this happens the particular trademark becomes generic term.
    For example, Xerox Corp. sells printers and photocopying machine. The brand has become so popular. People use to say – please Xerox these papers instead of saying please photocopy these papers.
    But prevention of trademark Genericide is very important for the company owners from the very beginning of their establishment of their business.
    Today I came across this amazing new website were i read about this more about avoiding trademark generic.
    http://blog.getmetrademark.com/
    I think you should check this site too. You will find some interesting information there.
    For more information and registering your trademark please do visit:
    http://www.getmetrademark.com/

     

    reply to this | link to this | view in thread ]

  16.  
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    Nitin, Feb 23rd, 2015 @ 11:05pm

    Re: Why it matters?

    Now you are asking that why and how it affects your services if someone uses your trademark to sell products manufactured or services provided under his command.

    it affects you are only you. You are losing the grip on the consumers if the infringer is supplying low quality products. Your consumers don't know that the product is not manufactured by you however, by an infringer of your trademark. They will stop purchasing your product and start purchasing the same product from your competitor.

    And after few years your business will be ruined. You will have lost all of your customer base and your market share. On the other hand, the person who was using your trademark is in profits because he sold his products without working on building reputation of the brand. He is in profits because he made profits on your hard work that you did to make your brand familiar with customers.

    Hope you are now getting that why it is important to protect it. Trademark genericide is something that is not under your control however, protection of your trademark falls under your control and you should take every possible steps to prevent its misuse.

     

    reply to this | link to this | view in thread ]


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