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Michelman & Robinson Secures Significant Trademark Ruling in Lawsuit against AOL

August 10, 2010

Michelman & Robinson, LLP’s (“M&R”) Intellectual Property Department earned a significant victory for internet advertising provider Advertise.com, Inc. (“Advertise.com”) in a trademark infringement lawsuit filed by internet giant, America Online (“AOL”). On August 3, 2010 the Ninth Circuit overturned an injunction barring Advertise.com from using the disputed designation ADVERTISE.COM.

As well-respected professionals in intellectual property law, Advertise.com retained M&R to represent the online marketing company in a lawsuit alleging that Advertise.com had infringed on AOL’s trademark rights to the designation ADVERTISING.COM by using its own designation ADVERTISE.COM. After the United States District Court granted AOL’s motion for a preliminary injunction, Advertise.com prevailed on appeal when the Ninth Circuit reversed the District Court’s decision in a critical trademark opinion.

Led by partners Andrew H. Selesnick and Todd H. Stitt, M&R asserted at the trial level that Advertise.com’s designation was generic and should not be subject to trademark protection. Relying on many of these arguments in its opinion, the Ninth Circuit agreed with M&R, holding that, “Advertise.com is likely to rebut the presumption of validity and prevail on its claim that ADVERTISING.COM is generic.” This ruling sets an important decision that should guide future cases where one company tries to trademark a generic term to stifle competition.

“We are thrilled with the outcome of this appeal. Our team worked diligently to execute a strategy that would secure a victory for Advertise.com,” said Dana A. Kravetz, Firm Managing Partner.

Andrew H. Selesnick commented, “To grant an exclusive right to one company for use of the generic name of a product or service is the equivalent to creating a monopoly in that particular product, something that trademark law is antithetically opposed to.”