A federal appeals court ruling could be a plus in Whitehouse.com's battle with a fruit juice maker over using White House in any form as a domain name.
The 9th Circuit Court of Appeals here ruled over a week ago that an Internet domain name incorporating a trademark doesn't necessarily "dilute" the trademark. National Product Company has sued to stop Whitehouse.com, an adult Web site, from "diluting and tarnishing" its White House brand.
The appeals court ruled in Avery Dennison Corp. v. Sumpton that Sumpton's registering avery.net and dennison.net didn't affect trademarks of the office supply company Avery Dennison. The ruling overturned a federal district court ruling to say, in appellate Judge Stephen Trott's words, that Sumpton "used words that happen to be trademarks for their non-trademark value."
That could prove a plus in Whitehouse.com's defense against the National Fruit Product suit. On the other hand, it may prove either no help or help for the other side in the porn site's trademark battle with America Online.
That battle is over Whitehouse.com's charge that AOL is impinging upon one of its marks, MYNEWS, which Whitehouse.com says is a descriptive mark that cannot be trademarked formally.
Whitehouse.com also accuses AOL of blocking it from sending e-mail to subscribers. AOL says Whitehouse.com is a notorious spammer and that the Internet provider will continue blocking any domain sending AOL members "unsolicited spam". Whitehouse.com says the mail in question involves nothing more serious than acknowledging customer orders from those visiting the porn site via AOL.
In the Avery case, Avery Dennison attorneys say the 9th Circuit Court "has raised the bar" on establishing whether a trademark is famous under federal law. Sumpton attorneys say the ruling is a win for the little guy. Trademark holders can no longer say "I have the trademark, you have the domain name - it's the same, give it to me," said attorney G. Gervaise Davis III to The Recorder.
