Formula for the Day: Generic Term + ".com" ≠ Protectable Trademark

The 9th Circuit released its decision in Advertise.com v. AOL Advertisiing, in which it held that AOL’s trademark “Advertising.com” was generic, that simply adding “.com” to the generic term “Advertising” did not make it distinctive, and reversed the district court’s injunction forbidding Advertise.com’s use of that domain name.  You can find the 9th Circuit's opinion here.

However, the 9th Circuit did acknowledge that in certain unusual circumstances a generic term might be used to create a protectable mark.  The court cited In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), in which the Federal Circuit found that mark ‘to be one of the “rare instances” in which the addition of a TLD ‘expanded the meaning of the mark’”.  In other words, the mere addition of a TLD may, under rare circumstances, convert a generic mark to a distinctive mark.