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?
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Filed Under: advertising.com, domain names, generic, trademark
Companies: aol

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  1. icon
    dnball (profile), 11 Aug 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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