FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ADVERTISE.COM, INC., 

Plaintiff-Appellant, No. 10-55069

v. D.C. No. 

AOL ADVERTISING 2:09-cv-05983- , INC., FKA

Platform-A, Inc.; AOL INC., VBF-CW

Defendants-Appellees. 

ADVERTISE.COM, INC., 

No. 10-55071 Plaintiff-Appellant,

D.C. No.

v.  2:09-cv-07374-

AOL ADVERTISING, INC., FKA VBF-CW

Platform-A, Inc.; AOL INC., OPINION Defendants-Appellees. 

Appeal from the United States District Court

for the Central District of California

Valerie Baker Fairbank, District Judge, Presiding

Argued and Submitted

May 6, 2010—Pasadena, California

Filed August 3, 2010

Before: Betty B. Fletcher and Richard A. Paez,

Circuit Judges, and David A. Ezra, District Judge.*

*The Honorable David A. Ezra, United States District Judge for the

District of Hawaii, sitting by designation. 

11163
Opinion by Judge B. Fletcher

11164 ADVERTISE.COM v. AOL ADVERTISING
COUNSEL

Jerome B. Falk, Jr., Blake J. Lawit, Sarah J. Givan, Howard

Rice Nemerovski Canady Falk & Rabkin, San Francisco, California; and Andrew Selesnick, Todd Stitt, Torin A. Dorros,

Brett A. Garner, Michelman & Robinson LLP, Encino, California, for the appellant.

Lee J. Eulgen, Lawrence E. James, Jr., Hillary I. Schroeder,

Neal, Gerber & Eisenberg LLP, Chicago, Illinois; Karin G.

Pagnanelli, Mitchell Silberberg & Knupp LLP, Los Angeles,

California; and Kannon K. Shanmugam, Christopher R. Hart,

Allison B. Jones, Williams & Connolly LLP, Washington,

D.C., for the appellees.

11166 ADVERTISE.COM v. AOL ADVERTISING
OPINION

B. FLETCHER, Circuit Judge:

Advertise.com, Inc., appeals the district court’s entry of a

preliminary injunction barring it from using a designation or

trade name that is confusingly similar to Appellees’ (“AOL”)

ADVERTISING.COM mark. We have jurisdiction under 28

U.S.C. § 1292(a)(1). We reverse and vacate the preliminary

injunction in part.

Facts and Procedural History

AOL owns trademark registrations covering certain stylized

representations of the mark ADVERTISING.COM. While

AOL’s applications for those registrations were pending

before the United States Patent and Trademark Office

(“PTO”), the PTO requested that AOL disclaim the standard

text version of ADVERTISING.COM to obtain registration of

the stylized representations of that term. AOL refused to disclaim the standard text version of the mark, maintaining that

although it did not claim exclusive rights to the term “advertising,” the standard text version of ADVERTISING.COM

mark was distinctive and protectable.1 AOL’s registrations

eventually issued without the requested disclaimer.

On August 17, 2009, AOL filed a complaint against Advertise.com in the Eastern District of Virginia and shortly thereafter filed a motion for a preliminary injunction. AOL alleged

that Advertise.com had infringed AOL’s trademark rights by

using the designation ADVERTISE.COM and by using a stylized version of that designation that was confusingly similar

to AOL’s stylized ADVERTISING.COM marks. The case

was transferred to the Central District of California and the

motion for a preliminary injunction was re-filed. 

1AOL had applied for trademark registration over the standard text mark

ADVERTISING.COM, but abandoned this registration. 

ADVERTISE.COM v. AOL ADVERTISING 11167
The district court enjoined Advertise.com from using “any

design mark or logo that is confusingly similar to the stylized

forms of AOL’s ADVERTISING.COM marks” and from

using the designation and trade name ADVERTISE.COM or

any other name confusingly similar to ADVERTISING.COM.

Advertise.com was not enjoined from using its website

address “advertise.com.” The court found that AOL was

likely to show that the ADVERTISING.COM marks, including the standard text mark, are descriptive and therefore protectable under trademark law. Because it found that the other

preliminary injunction factors also weighed in favor of AOL,

the district court granted the injunction. The district court

denied a stay of the injunction pending appeal, but a Ninth

Circuit panel granted a stay as to the portion of the injunction

prohibiting Advertise.com from using the designation or trade

name ADVERTISE.COM.

Advertise.com appeals the district court’s decision to grant

the preliminary injunction, arguing primarily that the standard

text mark ADVERTISING.COM is generic. Advertise.com,

however, does not contest that part of the preliminary injunction that enjoined it from using any design mark that was confusingly similar to AOL’s stylized marks. 

DISCUSSION

We review the district court’s grant of a preliminary injunction for abuse of discretion. Marlyn Nutraceuticals, Inc. v.

Mucos Pharma GmbH & Co., 571 F.3d 873, 876 (9th Cir.

2009). The district court “should be reversed if [it] based its

decision on an erroneous legal standard or on clearly erroneous findings of fact.” Stormans, Inc. v. Selecky, 586 F.3d

1109, 1119 (9th Cir. 2009) (quotation marks omitted). “A

plaintiff seeking a preliminary injunction must establish that

he is likely to succeed on the merits, that he is likely to suffer

irreparable harm in the absence of preliminary relief, that the

balance of equities tips in his favor, and that an injunction is

in the public interest.” Marlyn Nutraceuticals, 571 F.3d at 877

11168 ADVERTISE.COM v. AOL ADVERTISING
(quotation marks omitted). The issue of substance in this

appeal is whether the district court correctly determined that

AOL was likely to succeed on the merits. That issue is controlled by whether the district court correctly determined that

ADVERTISING.COM is a descriptive mark. Because

ADVERTISING.COM is a registered trademark, “a presumption of validity places the burden of proving genericness upon

the defendant,” Advertise.com. Filipino Yellow Pages, Inc. v.

Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir.

1999).

[1] Generic terms are those that refer to “the genus of

which the particular product or service is a species,” i.e., the

name of the product or service itself. Id. at 1147. “To determine whether a term [is] generic, we look to whether consumers understand the word to refer only to a particular

producer’s goods or whether the consumer understands the

word to refer to the goods themselves.” Yellow Cab Co. v.

Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir.

2005). A descriptive mark describes the qualities or characteristics of a product. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005).

Generic terms cannot be valid marks subject to trademark

protection, whereas a descriptive mark can be valid and protectable if it has acquired “secondary meaning.” Filipino Yellow Pages, 198 F.3d at 1147. “Whether a mark is generic is

a question of fact.” Yellow Cab Co., 419 F.3d at 929 (quotation marks omitted). 

[2] “Context is critical to a distinctiveness analysis. . . .

[and the level of distinctiveness of a mark] can be determined

only by reference to the goods or services that [the mark]

identifies.” Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1201

(9th Cir. 2009) (quotation marks omitted). Because the parties

do not dispute it on appeal, we accept the district court’s finding that there 

are two core facets to AOL’s service offerings under

its ADVERTISING.COM marks: (1) courting web

ADVERTISE.COM v. AOL ADVERTISING 11169
publishers in order to provide them with a suite of

services including placement of third-party ads on

the publisher’s site, with the publisher receiving a

share of the revenue generated from such placements, and (2) selling online advertising space and

other services such as marketing campaign management services and research services to web marketers. 

The parties likewise appear to agree that the genus of these

services is “online advertising” or “internet advertising.”

AOL’s brief, for example, consistently refers to the type of

services it offers under the ADVERTISING.COM mark as

“online-advertising services” and refers to the “onlineadvertising genus.” In addition to reflecting the nature of

AOL’s services as described by the district court, taking “online advertising” as the genus reflects how AOL and third parties have portrayed the services offered under the mark. 

[3] With this context in mind, we consider whether

ADVERTISING.COM conveys only the “genus of which

[AOL’s] particular [service] is a species” or whether it is

descriptive because it “directly describe[s] the qualities or features of the product.” One Indus., LLC v. Jim O’Neal Distrib.,

578 F.3d 1154, 1164 (9th Cir. 2009) (quotation marks omitted). Although the distinctiveness inquiry considers the

impression conveyed by the mark as a whole, see Filipino

Yellow Pages, 198 F.3d at 1148, 1150, we are permitted to

begin our inquiry by separately viewing the component parts

of the mark. See Lahoti, 586 F.3d at 1201. Accordingly, our

first step is to consider the impression conveyed by “advertising” and “.com,” taken separately. “Advertising” is concededly generic and is defined as “the action of calling something

(as a commodity for sale, a service offered or desired) to the

attention of the public esp. by means of printed or broadcast

paid announcement.” Webster’s Third New International Dictionary 31 (2002). The term “.com” is a top-level domain

indicator (“TLD”), In re Oppendahl & Larson LLP, 373 F.3d

11170 ADVERTISE.COM v. AOL ADVERTISING
1171, 1173 (Fed. Cir. 2004), and reflects an online commercial organization or refers “generically to almost anything

connected to business on the internet.” Taken separately, it is

clear that “advertising” and “.com” reflect only the genus of

the services offered. 

This does not, however, end our inquiry. Although these

definitions persuasively suggest that ADVERTISING.COM is

understood as generic by the consuming public and we give

them significant weight, see Filipino Yellow Pages, Inc., 198

F.3d at 1148, our cases establish that we look to the mark as

a whole and that the combination of generic terms may, in

some instances, result in a distinctive mark. AOL contends

that it is likely to prevail on the merits because the composite

of these two generic terms is descriptive and Advertise.com

did not provide sufficient evidence of genericness to rebut the

presumption of validity. 

[4] We disagree. We begin with our familiar “who-areyou/what-are-you” test: “A mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’ ‘Who

vouches for you?’ But the [generic] name of the product

answers the question ‘What are you?’ ” Id. at 1147 (quotation

marks omitted, alteration in original). Applying this test

strongly suggests that ADVERTISING.COM is generic.

When any online advertising company, including AOL’s

competitors, is asked the question “what are you?” it would

be entirely appropriate for the company to respond “an advertising.com” or “an advertising dot-com.” See id. at 1151.

Likewise, asking one of AOL’s competitors “Could you refer

me to an advertising dot-com?”, one would hardly be surprised if they offered their own services. See Yellow Cab Co.,

419 F.3d at 929. We see strong evidence of this in the common use of “.com” to refer to internet businesses. For example, the American Heritage Dictionary defines “dot-com” as

“of or relating to business conducted on the Internet: dot-com

advertising.” American Heritage Dictionary of the English

Language 538 (4th ed. 2006). That the use of “advertising”

ADVERTISE.COM v. AOL ADVERTISING 11171
and “.com” as a combination to refer to internet advertising

is commonplace enough to be used as an example in a dictionary definition strongly suggests that ADVERTISING.COM

is generic. See Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1018 (9th Cir. 1979) (looking, in

part, to the natural usage of “surgical” and “centers” as

reflected in the composite “Surgicenter”). 

[5] There is extensive Federal Circuit precedent in support

of our conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark. The Federal Circuit has repeatedly affirmed the Trademark Trial and Appeal

Board’s (“TTAB”) findings that marks similar to ADVERTISING.COM are generic.2

See In re Hotels.com, 573 F.3d

1300, 1304 (Fed. Cir. 2009) (HOTELS.COM); In re

1800MATTRESS.COM IP, LLC, 586 F.3d 1359, 1361-62

(Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier

Props. Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007) (LAWYERS.COM).

3

 The Federal Circuit has been explicit that

adding “.com” or another TLD to an otherwise unprotectable

term will only in rare circumstances result in a distinctive

composite. See In re Steelbuilding.com, 415 F.3d 1293, 1297

2The Federal Circuit reviews the TTAB’s decision for substantial evidence. See In re Hotels.com, 573 F.3d 1300, 1302 (Fed. Cir. 2009). The

underlying determination by the PTO, however, that a mark is generic

must be supported by clear evidence. Id. Therefore, when the Federal Circuit reviews a TTAB’s finding of genericness for substantial evidence it

must take the heightened burden of proof into account. Id.; see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254 (1986) (explaining that the

heightened standard of clear evidence, which would be party’s burden at

trial, must be considered when evaluating the sufficiency of the evidence

on a motion for summary judgment). 

3Several TTAB decisions have also found similar marks generic. See In

re Eddie Z’s Blinds and Drapery Inc., 74 U.S.P.Q.2d 1037 (T.T.A.B.

2005) (BLINDSANDDRAPERY.COM); In re DNI Holdings Ltd., 77

U.S.P.Q.2d 1435 (T.T.A.B. 2005) (SPORTSBETTING.COM); In re Martin Container Inc., 65 U.S.P.Q.2d 1058 (T.T.A.B. 2002) (CONTAINER.COM); In re Cyberfinancial.Net Inc., 65 U.S.P.Q.2d 1789 (T.T.A.B.

2002) (BONDS.COM). 

11172 ADVERTISE.COM v. AOL ADVERTISING
(Fed. Cir. 2005) (“Only in rare instances will the addition of

a TLD indicator to a descriptive term operate to create a distinctive mark.”); In re Oppendahl & Larson LLP, 373 F.3d at

1174-76. This position comports with existing Ninth Circuit

law explaining that, in the context of likelihood of confusion,

the addition of “.com” to a mark generally does not strengthen

the mark. See Brookfield Commc’ns. v. W. Coast Entm’t

Corp., 174 F.3d 1036, 1055 (9th Cir. 1999). 

AOL’s attempt to draw an analogy to In re Steelbuilding.com is unavailing. Although the Federal Circuit in that

case vacated the TTAB’s finding that the mark STEELBUILDING.COM was generic, In re Steelbuilding.com, 415

F.3d at 1301, the court’s reasoning is inapplicable here. In

large part, that decision rested on the Federal Circuit’s conclusion that there was insufficient evidence that the composite

STEELBUILDING was generic for “steel buildings” and not,

as AOL asserts, on a finding that the addition of “.com” to the

mark resulted in a distinctive composite. See id. at 1298-99.

Given the generic nature of the term “advertising,” In re

Steelbuilding.com reflects a substantially different case for

this reason alone. Moreover, to the extent that the Federal Circuit also concluded that STEELBUILDING.COM represented

one of the “rare instances” in which the addition of a TLD

“expanded the meaning of the mark,” it did so because the

services provided under the mark went far beyond “the mere

sale of steel buildings.” Id. at 1299. The addition of “.com”

conveyed a unique and unexpected character of the services

related to the internet: allowing the consumer to use an interactive online feature to design, determine the price of, and

then purchase the building. See id. at 1298-99. In contrast, the

services offered under ADVERTISING.COM remain, at core,

the simple provision of online advertising services. This is not

the sort of “unusual case” reflected by In re Steelbuilding.com. Id. at 1298-99. That AOL uses a mark incorporating

a TLD in connection with offering a service related to and

commonly provided on the internet—the use of the internet

comprising, in this case, an element of the genus of the

ADVERTISE.COM v. AOL ADVERTISING 11173
service—renders this a very different set of facts. Cases such

as In re Hotels.com, 573 F.3d at 1304, are far more analogous

to the present appeal than In re Steelbuilding.com.

AOL also attempts to rely on In re Oppendahl & Larson

LLP, a case in which the Federal Circuit held that PATENTS.COM was not entitled to protection because it was

“merely descriptive.” 373 F.3d at 1173, 1177. AOL argues

that the Federal Circuit found that the mark PATENTS.COM

was not generic, and, therefore, that ADVERTISING.COM is

also not generic. AOL, however, misreads In re Oppendahl.

The issue before the court in that case was whether the TTAB

had correctly concluded that the mark was not protectable

because it was merely descriptive; the court had no occasion

to consider whether the mark was generic.4See id. We therefore do not consider the Federal Circuit’s determination that

the PATENTS.COM was “merely descriptive” as an indication that it even considered, let alone concluded, that the mark

was not generic. That issue was not before the court. 

[6] Further support for finding ADVERTISING.COM

generic is evident in how the mark has been used in other

domain names. See In re Hotels.com, 573 F.3d at 1304; In re

1800MATTRESS.COM, 586 F.3d at 1363; In re Reed Elsevier

Props. Inc., 482 F.3d at 1380. Advertise.com points to thirtytwo separate domain names that incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.” The Federal Circuit has found such evidence is sufficient to prove

genericness under a clear evidence standard when the elements of the mark are highly generic, even in the face of substantial rebuttal evidence. See, e.g., In re Hotels.com, 573

F.3d at 1304-06 (explaining that sixty four declarations that

the mark was not generic and a customer survey did not

4The Trademark Manual of Examining Procedure (TMEP) § 1209.02(a)

provides that descriptiveness, rather than genericness, should be the initial

basis for the agency’s refusal to register a mark. 

11174 ADVERTISE.COM v. AOL ADVERTISING
negate the TTAB’s ultimate conclusion of genericness). We

also observe that the PTO has rejected as generic other, nearly

identical marks, such as ADVERTAIS.COM,

5

 and AOL’s

own AD.COM mark. 

AOL briefly argues that the addition of a TLD expands the

meaning of a mark because a consumer will typically understand a mark with a TLD as an internet domain name. Noting

that only a single entity can hold a domain name at any given

time, AOL contends that marks that communicate domain

names, such as ADVERTISING.COM, intrinsically denote

source. Because “advertising,” standing alone, is an archetype

of a generic term, were we to follow AOL’s logic we would

be hard pressed to think of a case in which the addition of a

TLD would not result in a protectable mark. AOL is in effect

proposing a per se rule that the addition of a TLD to a generic

term results in a protectable mark.6 The PTO, TTAB, and

Federal Circuit have all rejected this position, for good reason. See In re Hotels.com, 573 F.3d at 1305-06; In re Oppedahl & Larson LLP, 373 F.3d at 1176-77; In re Hotels.com,

L.P., 87 U.S.P.Q.2d 1100, 1106 (T.T.A.B. 2008); TMEP

§§ 1209.03(m), 1215.02(a).

Notwithstanding that only one entity can hold a particular

5On the urging of the applicants attempting to register

ADVERTAIS.COM, the PTO treated “advertais” as Spanish for “advertise.” The PTO explained that, applying this definition, the mark “directly

described the services.” 

6Somewhat incredibly, AOL attempts to argue that it is Advertise.com

who is proposing a per se rule, claiming that the result that Advertise.com

urges would cast all marks composed of a generic term and a TLD into

the public domain. Advertise.com proposes no such rule that a generic

term combined with a TLD will always be generic, and we do not adopt

such a rule here. 

AOL also raises a concern that refusing to protect such marks will result

in “parasite” marks such as “addvertising.com” diverting business from

marks like ADVERTISING.COM. The simple response is that this is the

peril of attempting to build a brand around a generic term. 

ADVERTISE.COM v. AOL ADVERTISING 11175
domain name, granting trademark rights over a domain name

composed of a generic term and a TLD grants the trademark

holder rights over far more intellectual property than the

domain name itself. In addition to potentially covering all

combinations of the generic term with any TLD (e.g., “.com”;

“.biz”; “.org”), such trademark protection would potentially

reach almost any use of the generic term in a domain name.

For example, AOL might bring suit, alleging infringement of

its ADVERTISING.COM mark, against any one of the owners of the thirty-two domain names using some form of “advertising.com.” This would make it much more difficult for

these entities to accurately describe their services. “To allow

trademark protection for generic terms, . . . even when [they]

have become identified with a first user, would grant the

owner of the mark a monopoly, since a competitor could not

describe his goods as what they are.” Surgicenters, 601 F.2d

at 1017 (quotation marks omitted).7 A major advantage that

AOL would get from trademark protection of ADVERTISING.COM is to foreclose competitors from using a vast array

of simple, easy to remember domain names and designations

that describe the services provided. The effect is similar to

that which would result if trademark law embraced the obviously generic ADVERTISING COMPANY as a protectable

mark because it “ha[d] become identified with a first user.”

Id.

Relatedly, the primary reason that a consumer is likely to

associate a domain name with a source is that the second-level

domain indicator (in this case the “advertising” component of

“advertising.com”) is distinctive. See Brookfield Commc’ns.,

174 F.3d at 1055; Panavision Int’l, L.P. v. Toeppen, 141 F.3d

1316, 1325 (9th Cir. 1998). When a generic term is used as

7This is one of the major points of contrast between domain names and

vanity telephone numbers. See, e.g., In re Martin Containers Inc., 65

U.S.P.Q.2d at 1061 (distinguishing In re Dial-a-Mattress Operating Corp,

240 F.3d 1341 (Fed. Cir. 2001), in which the Federal Circuit reversed a

finding that a vanity telephone number was generic). 

11176 ADVERTISE.COM v. AOL ADVERTISING
the second-level domain indicator, however, it is far less clear

that the consumer understands that the website corresponds to

a brand or is seeking out a particular source. “Trademark law

requires evaluation of a proposed mark to ascertain the commercial impression conveyed in light of the goods or services

associated with the mark, not a simple check for ownership of

an Internet address.” In re Oppedahl & Larson LLP, 373 F.3d

at 1177; see also TMEP §§ 1209.03(m), 1215.02(a).

[7] This does not appear to be the “rare case” in which the

addition of a TLD to a generic term results in a distinctive

mark. Rather, the record before us demonstrates that Advertise.com is likely to rebut the presumption of validity and prevail on its claim that ADVERTISING.COM is generic. How,

then, did the district court reach the opposite conclusion?

Examining its decision, we conclude that it did so due to an

error of law and therefore abused its discretion in granting the

injunctive relief challenged here. Stormans, Inc., 586 F.3d at

1119.

The district court’s analysis of whether ADVERTISING.COM is generic is brief and never explicitly states the

standard the court applied. The explanation of its conclusion

that ADVERTISING.COM is descriptive, however, convinces

us that it did not apply the correct legal standard to the facts

before it. The court’s reasoning appears in a single sentence

that reads “The term ‘advertising’ describes the services that

AOL offers, and the ‘.com’ either indicates a commercial

entity, use of the internet in association with the mark, or

describes the internet-related nature of AOL’s services.”

We conclude that the district court did not correctly apply

the legal standard for determining whether a mark is generic.

Even if we credit the district court’s rationales as factually

accurate—i.e., if we assume that the addition of “.com” serves

the three identified functions—ADVERTISING.COM still

conveys only the generic nature of the services offered. That

“.com,” when added to a generic term, “indicates a commerADVERTISE.COM v. AOL ADVERTISING 11177
cial entity” does not suffice to establish that the composite is

distinctive, much as AOL would not have created a protectable mark by adopting the designation “Advertising Company.” See Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber

Co., 128 U.S. 598, 602-03 (1888) (holding that the addition

of “Company” to an otherwise generic mark does not render

the mark distinctive); see also In re Oppendahl & Larson

LLP, 373 F.3d at 1175, 1177 (explaining that, although not a

perfect analogy, TLDs are similar to entity designations such

as “Corp.”). 

As to the remaining two rationales, neither suggests that

ADVERTISING.COM does anything more than convey the

genus of the services offered under the mark: internet advertising. A mark is not descriptive merely because it conveys

some minimal information about a product or service; if all it

“describes” is the common name of the product or service, it

is not protectable as a trademark. See Filipino Yellow Pages,

198 F.3d at 1147 (“Courts sometimes refer to generic terms

as ‘common descriptive’ names, the language used in the Lanham Act for terms incapable of becoming trademarks.”).

Rather, a descriptive mark conveys the “qualities or characteristics of a good or service.” Park ‘N Fly Inc. v. Dollar Park

& Fly, 469 U.S. 189, 194 (1985) (emphasis added); see Yellow Cab Co., 419 F.3d at 927 (“Descriptive marks define a

particular characteristic of the product . . . .” (quotation marks

omitted)). The mark at issue in Filipino Yellow Pages is analogous to ADVERTISING.COM in this respect. In that case,

the use of “Filipino” in the mark, although arguably describing the content of the “Yellow Pages,” still resulted in a mark

that conveyed only the genus of the product offered. See Filipino Yellow Pages, 198 F.3d at 1148, 1151; see also Mil-Mar

Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1157-58 (7th Cir.

1996). In the present case, the use of “.com” likewise only

conveys the genus of the services offered under AOL’s mark.

[8] We have already stated that we create no per se rule

against the use of domain names, even ones formed by com11178 ADVERTISE.COM v. AOL ADVERTISING
bining generic terms with TLDs, as trademarks. Nor, given

the posture of this appeal, do we completely foreclose the

possibility that AOL might prove its case on a fully developed

record. See Marlyn Nutraceuticals, 571 F.3d at 876-77. It is

not inconceivable but certainly highly unlikely that consumer

surveys or other evidence might ultimately demonstrate that

AOL’s mark is valid and protectable. However, on the record

before us, we conclude that the district court abused its discretion in determining that Advertise.com could not meet its burden of rebutting the presumption of validity and that AOL

was, therefore, likely to prevail on the merits. Having so concluded, we need not consider the three remaining preliminary

injunction factors. See Doe v. Reed, 586 F.3d 671, 681 n.14

(9th Cir. 2009), aff’d ___ S.Ct. ___, 2010 U.S. LEXIS 5256

(June 24, 2010). 

CONCLUSION

[9] We reverse the district court and vacate the preliminary

injunction to the extent that it enjoined Advertise.com from

using “the designation and trade name ADVERTISE.COM or

any other designation or trade name that is confusingly similar to AOL’s ADVERTISING.COM marks.” Because Advertise.com did not appeal the injunction as to its use of the

stylized marks or logos that the district court found to be confusingly similar to AOL’s stylized marks, we leave that portion of the injunction undisturbed.

INJUNCTION VACATED IN PART.

ADVERTISE.COM v. AOL ADVERTISING 11179