## Facts

- America Online, Inc. (AOL) and AT&T Corp. were competing internet service providers offering email and real-time messaging-related features.
- AOL asserted trademark rights in the terms “Buddy List,” “You Have Mail,” and “IM,” used in connection with its online services; “Buddy List” was federally registered, and AOL sought registration for “You Have Mail.”
- AOL used “Buddy List” to describe a feature allowing subscribers to maintain selected contacts and see which are currently online.
- AOL used “You Have Mail” as an on-screen notification indicating new email.
- AOL used “IM” as shorthand for “instant messaging”/real-time chat within its service.
- AT&T used similar terminology, including “You Have Mail!” for email notification, a “buddy list” feature, and “IM Here.” for a function related to online-status notification and real-time communication.
- In the district court, AT&T moved for summary judgment, arguing the asserted terms were generic and therefore not protectable under the Lanham Act.

## Issues

1. Whether “Buddy List” was generic as a matter of law, rendering AOL’s registered mark invalid and unenforceable.
2. Whether “You Have Mail” and “IM” were generic terms for email notification and instant messaging, and thus incapable of trademark protection.
3. Whether summary judgment for AT&T was proper given the evidentiary record and the statutory presumption arising from AOL’s federal registration for “Buddy List.”

## Decision

- The Fourth Circuit affirmed summary judgment that “You Have Mail” is generic and unprotectable.
- The Fourth Circuit affirmed summary judgment that “IM” is generic and unprotectable.
- The Fourth Circuit vacated summary judgment as to “Buddy List,” holding that genuine disputes of material fact existed as to whether the term was generic or instead functioned as a source identifier, and remanded for further proceedings.
- Disposition: affirmed in part, vacated in part, and remanded.

## Legal Principles

- Marks fall into four categories—fanciful/arbitrary, suggestive, descriptive, and generic—and generic terms “never qualify” for Lanham Act protection.
- Genericness turns on the “primary significance” of the term to the relevant public: whether it names the product/service itself rather than its source.
- Federal registration provides prima facie evidence of validity; the party asserting genericness bears the burden to rebut that presumption.
- Secondary meaning cannot make a generic term protectable; if a term is generic, consumer association with one seller does not confer trademark rights.
- An abbreviation is generic when it is commonly understood as a shorthand for a generic term.

## Conclusion

The Fourth Circuit held that “You Have Mail” and “IM” were generic names for common online features and therefore unprotectable, but vacated summary judgment on AOL’s registered “Buddy List” mark because the presumption of validity and conflicting evidence created a triable fact dispute over whether the term functioned as a source identifier.


America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001)