New York -- AOL is out in a legal scuffle with its moniker. This week, the company has filed a lawsuit against “Advertise.com”, for trademark infringement and employing unfair competition practices, with the Internet giant claiming that the name and the design are quite similar to its own Advertising.com and Ad.com, all the while offering very similar services.
In the official complaint filed this week in federal district court in Virginia, AOL argued that the “Plaintiffs and their predecessors have continuously used and extensively promoted the ADVERTISING.COM and AD.COM names and marks in connection with the provision of a variety of services.”
AOL argues that Advertise.com's name deceives customers into thinking that the company is affiliated with the AOL brands Advertising.com and Ad.com.
The Web giant is alleging trademark infringement and unfair competition. Advertise.com, as you might expect and/or hope, offers some similar services. AOL believes that this could create undesirable confusion among customers, who may believe that Advertise.com is somehow associated with the company.
In the lawsuit, AOL claims that the domain name is virtually identical and confusingly similar to AOL's Advertising.com:
“Advertise.com's unauthorized use of the Advertise.com designation with services that are substantially identical and complimentary to those offered by plaintiffs under the Advertise.com and Ad.com marks is likely to confuse, to cause mistake or to deceive... Indeed, Advertise.com's unauthorized use of the Advertise.com designation has already caused such confusion.”
It has asked a district court in Virginia to order Advertise.com to “modify its corporate and legal name to one that does not incorporate the term Advertise.com, Advertising.com, Ad.com or any such terms confusingly similar thereto”.
“Through its behavior, Advertise.com has created circumstances whereby members of the public and members of the relevant trade are likely to be led to incorrectly believe that Advertise.com and its services are authorized by, sponsored by, or affiliated with Plaintiffs.”
Both companies in this lawsuit about branding have recently altered their names. Last year, AOL switched Advertising.com's corporate name to Platform-A. But the company claims that it still owns the trademark rights to Advertising.com and that it has applied for a trademark for Ad.com. The online ad company Advertise.com was formerly called ABCSearch, until earlier this year.
ABCSearch later on re-branded itself to be know as Advertise.com, and now AOL is suing to stop it using what it says is the “confusingly similar” Advertise.com name and design to sell the same services that it does.
According to the filing, Advertise.com's traffic went from 723 unique visitors in February to 23.249 in May, the month after the re-brand.
AOL's case is significantly stronger because their own URL is so generic. Just recently, a court ruled that Hotels.com could not trademark its name because the term “hotels” is too indistinct and descriptive. Essentially, their URL is not about their brand so much as the content on their site.
A similar notion could be applied to Advertising.com. And the fact is that AOL no longer uses the brand seems to make the confusion less drastic. Except it is benefiting Advertise.com's business.
Many observers are somewhat incredulous, considering that AOL does not even own the domain name Ad.com.
But AOL might be able to triumph here despite that ruling, says trademark attorney Martin Schwimmer, a partner at the law firm Moses & Singer. For one thing, AOL might be able to prove that Advertise.com copied the design of the Advertising.com logo -- which could be protected even if the name of the company is too generic to be trademarked.
Furthermore, Schwimmer says, the federal court in Virginia can also consider whether Advertise.com is engaging in unfair competition. AOL could potentially prevail on that claim regardless of whether “Advertising.com” is too generic to be trademarked.
AOL's legal filing can be found here.