Not long ago Microsoft generated some new
guidelines for how third parties were to refer to its trademarked
products. One change was that the company’s lawyers were insisting that
“Windows” should never appear in any document, even once, without an
accompanying trademark registration mark right beside it.
It may be a little late for that. Michael Robertson and Lindows.com
won a shocking preliminary victory in court Friday that threatens to turn a
prized Microsoft trademark into a generic term for software that doesn’t work
very well. Even more surprising is how many experts say they predicted
this would happen.
Last December, when Microsoft filed suit against Lindows and its founder Robertson, experts cautioned that Microsoft might be on dangerous ground. Several intellectual property lawyers suggested that Microsoft had committed several critical errors that might put its trademark at risk.
One problem was the company was using a generic term as a trademark.
In their short online primer on trademark law, Larry Lessig, David Post, and
Eugene Volokh suggest avoiding individual words and short phrases, and to
strenuously avoid generic words if possible. More than one U.S. court has ruled
that “a generic term … even if it has acquired distinctiveness or a
secondary meaning” may not fall under the full control of any one company. This is
particularly important if a company is trying to avoid “dilution” of
the value of a trademark by preventing others from using similar words.
The more distinctive the word or phrase, the more likely a business can win a court
battle claiming that another firm’s use of a similar word devalues the
goodwill associated with its trademark. Thus, a word like Coca-Cola is easier to protect than a word like Windows. Sources suggest that, by
continuing to pick common names for products, including Sidewalk (U.S. Patent Office
serial #75976719), Slate, (serial#75114433) and Bob (#74603156),
Microsoft has set itself up for a continuing series of challenges.
Another trap for a would-be trademark holder is trying to overextend
the trademark to the point that it no longer identifies any distinctive
set of products or services. My examination of the U.S. Patent Office’s
TESS
database shows that Microsoft has filed more than 100 trademark
applications to broaden and extend its rights to the Windows trade name. Currently
it has registered Windows as a trademark for trade shows (#75371267) ,
smart cards (#75573286), mail order (#75868853), tech support (#75868854)
information services and entertainment (#75879977), CDs and joysticks (#75702468),
sound systems (#74413669), printer cartridges (#74274174), even “computer
programs for use in automobiles” (#75980682). This over-extension risks
confusion over just what it is that Microsoft has been trying to trademark.
Oddly enough, the company never explicitly extended its Windows
trademark to cover software past its original claim, which was
restricted to the “graphical operating environment” for “microcomputers”
(#74090419). There appears to be no separate filing to cover such software for items
as servers, or for enterprise software. In addition, Microsoft
originally treated its trademark very narrowly. It filed a separate “Windows for
Data” (#73636382) trademark in 1987, for its software products, seven years
before first registering the word “Windows” by itself.
Even more damaging, Microsoft committed a cardinal sin for a
would-be trademark holder; it enforced its trademark inconsistently, litigating
some firms while allowing others to use the word Windows without any
apparent penalty. For example, in various applications to the Patent Office, most notably #74716365 Microsoft filed to extend Windows as its exclusive trademark for
magazines. However, it allowed both Penton
and CMP to publish magazines with
Windows in the title.
Dohring Online initially applied for a trademark for “Datacomp for
Windows.” Although the trademark did not get registered, the company had used it
without challenge for six years. Delta Systems originally applied for a
trademark for Quickcheck for Windows. While that name was never
formally registered, the product has resurfaced as EZ
Check for Windows. Northeast Monitoring still uses the phrase Holter for Windows for its instrumentation package. Geologic Systems applied for a
trademark for GeoScout for Windows, and , although the company abandoned its
registration effort, Geologic
still uses Windows as a part of its product name. The product name
“Wise for Windows” was used for years by Microsoft partner Wise Inc. at
the same time. Wise abandoned its attempt to secure a trademark,
for the phrase but it still uses the product name without interference
from its partner. The product called CQ
for Windows still exists without any reference to Microsoft in
federal courseware programs.
In addition, the word “Windows” and a host of variants are used by a
variety of other companies for all sorts of products and services.
Among them, the owner of hardware store in Arkansas, who trademarked a phrase
never heard in Redmond, “Windows that Work,” in 1997 (#75474275).
Microsoft may be in the media business, but the name Windows as a
trademark for entertainment services is owned by a couple of fellows on Route
4 in Martin, Tennessee. Windows is also a trademark (#75174557) of the Randall
Products International for its line of cosmetics. Windows is a
trademark (serial # 76296937) of George M. Leader Family Corp. for its brand
of “healthcare services for patients afflicted with dementia.” At one
time, Windows was a trademark of the Kimberly Clark for that company’s brand
of urinal cleaner-deodorizers, a claim not abandoned until 1998. Window
is the trademark (#75886964) held by a Taiwanese medical hardware
company best known for its line of bone screws. Cyber Window is held
(#75761099) by Japan’s AVIX Inc., for its line of electronic display devices. Windough
is registered to the Interactive Toaster Corp. for a game. Even the U.S. Patent Office itself has been allowed to get sloppy with the Windows trademark. The Patent Office’s
Web site features a text retrieval product it calls “Document
Delivery for Windows” (DocDW).
Before the trial began, the Lindows CEO had warned, “we are looking
forward to showing the court the widespread use of the term ‘windows’ or
variations thereof by literally hundreds of companies which are not endorsed or
sponsored by Microsoft.” The court saw
the same pattern and has now threatened to deprive Microsoft of one
of its most valuable assets.
It is worth noting that the company has had plenty of troubles with
the Windows trademark, almost from the beginning. The company’s
trademark was originally turned down in the United States, and prompted a lawsuit threat by Borland Corp. that was only settled with a payment of over a million
dollars. Sloppiness in defining its trademark and in filing led to unending
troubles in Europe. When Microsoft filed a complaint against AG Communications
Systems for using the brand Windowphone, it was slapped
down by a French Court, which overturned Microsoft’s claims that it
had been using Windows since 1983. The court said said that Microsoft had
no claim on the term until late 1992, if not well afterwards. In
Britain, Microsoft’s trademark application languished for years.
As late as 2000 the Korean Patent Court rejected Microsoft’s attempt to overturn the
“Window” trademark held in Korea by Yangji Total Stationery Co., a producer of
daybooks and diaries based in Seoul. The Microsoft suit was not only turned
down, it backfired. As a result Microsoft almost lost any rights to use the
name Windows in Korea. Today Microsoft’s Web site in Korea features the phrase “Microsoft Windows” with a registration
mark but not Microsoft® Windows® as it would in the United States.
While the judge’s ruling in the Lindows case is only preliminary,
several intellectual property lawyers described it as “devastating.” IP lawyers
suggest that it means that, for the time being, any software company could use
the word Windows if it wanted to. That prompted the comment by several members of the hacker community, “But who would want to?”
