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Recent Case Notes & Commentary

Adding Generic Words To A Trademark: Confusing Similarity

It is well established that adding generic words to a trademark will not negate a finding of confusing similarity that otherwise exists. There are many decisions that reach this result, probably so many that it might be hard to find one when you need it, like looking for a taxi.

So you might like to keep the decision in AOL Inc. v. Tech Helpdesk 247, Claim Number: FA1311001532064 (NAF) at your fingertips for the next time you have to cite a decision on this point. The trademark was AOL and the registrant of the domain name had added  “tech support”, so that the domain name read <>. Not surprisingly, the panel found that there was confusing similarity for, as the panel said :

” The Panel determines that Respondent’s addition of a generic phrase to Complainant’s mark does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶4(a)(i). See Am. Express Co. v., FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).”


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