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AOL Trademark Claim Refused as Generic

June 23,, AOL, Domaining, Domainnamewire, Policy & LawComments Off on AOL Trademark Claim Refused as Generic

Trademark examiner refuses trademark again.

AOL’s continued battle to trademark a domain name it doesn’t even own has hit another roadblock. On June 21, a U.S. Patent and Trademark Office examiner refused the trademark for on the grounds that it’s generic.

The USPTO previously refused the mark because was merely descriptive of AOL’s services. In response, AOL amended the application to add a claim of acquired distinctiveness.

In refusing the application on the basis of its generic nature, the examiner noted:

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services…Generic terms are by definition incapable of indicating a particular source of the goods and/or services, and cannot be registered as trademarks and/or service marks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are…Thus, applicant’s claim of acquired distinctiveness under 15 U.S.C. §1052(f) is insufficient to overcome the refusal because no amount of purported proof that a generic mark has acquired secondary meaning can transform it into a registrable trademark.

The addition of .com is generally considered just an internet address and is often disregarded. This is a similar problem that 1-800-Mattress had trying to trademark But at least in that case it actually owned the domain name it was trying to trademark.

© 2010.

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  3. New Top Level Domain Trademark Frontrunning Battle Heats Up Scores First Victory in Lawsuit with AOL

October 19,,,, AOL, Domaining, Domainnamewire, Policy & LawComments Off on Scores First Victory in Lawsuit with AOL

Judge forces AOL to change venue. 1, AOL 0.

Online advertising company has scored its first victory in its legal battles with AOL: a judge has ruled against AOL’s favored jurisdiction of the Eastern District Court of Virginia. AOL was forced to refile the case in California Central District Court, where is based.

Both companies sued each other back in August, after AOL blamed of trademark infringement of AOL’s brand. AOL is also claiming trademark rights to, which derailed the $1.4M sale of that domain name. released the following statement today:

In a lawsuit filed in August 2009, corporate giant America Online continues the dirty tactics long associated with big business by suing for its use of the generic word “advertise” in its designation and domain names.

Termed a battle between David & Goliath by the court itself, AOL seeks to monopolize the online advertising market and unfairly restrain its competitors by asserting extremely broad rights to words commonly used in our daily vernacular. AOL’s lawsuit is an attempt to unjustly overtake the entire online marketing space and if unopposed could likely lead to attacks on other competitors in the Internet advertising world. won its first battle against latter-day Goliath on October 9, 2009, when it prevailed in a motion to dismiss based on venue in the Eastern District Court of Virginia. AOL purposely chose to bring the suit in Virginia, well-known for its exceedingly fast docket, even though the disputed action took place in California and AOL’s own headquarters are located in New York.

AOL failed when the court ruled in favor of and granted a transfer of venue. This was AOL’s underhanded and calculated scare tactic to keep off balance with mountains of paperwork and multiple legal threats in hopes it would give in to AOL’s unfounded demands.

© 2009.

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Related posts:

  1. AOL Sues for Trademark Infringement
  2. Domain Owner Wins Expenses in Lawsuit
  3. ABCSearch Buys Another Play on

September 28,, Domain Sales, Domaining, Domainnamewire, sedoComments Off on Another Play on

The saga gets more interesting.

Sedo has completed the sale of for $50,000. This is a curious sale because of what is now up at

Zoom in on a couple key elements, including the logo and copyright notice:



It sure looks like whomever has created this basic web site at is trying to make a play on, the disputed trademark that has caused some million dollar heartache.

There’s very little information about on the web site; only a few contact forms. Its whois is privacy protected. It will be interesting to watch this one.

In other Sedo sales this past week, the auction for has closed and the deal completed. The final sale price was the opening bid of 65,000 GBP, or just a hair over $100,000 USD at today’s exchange rates.

Other Sedo sales from the past week:

.COM 31,000 USD 25,500 USD 20,000 USD 11,000 USD 10,000 GBP 10,000 USD 9,500 USD 8,000 USD 7,700 USD 7,000 USD 7,000 USD 5,500 USD 5,000 USD 5,000 USD 5,000 USD 5,000 USD

ccTLD 22,000 EUR 11,100 EUR 9,999 USD 7,325 EUR 6,600 GBP 6,500 USD 5,500 EUR 5,000 EUR

Other 20,000 USD 6,500 USD 5,850 EUR 5,500 USD 5,000 USD

© 2009.

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