High-tech trademark troubles

Lawyer Doug Isenberg says the "Lindows" litigation involving Microsoft and a start-up offers valuable lessons about how--and how not--to wage a tech trademark battle.

4 min read
Microsoft's intriguing legal fight to prevent a start-up from identifying itself and its software as "Lindows" provides some valuable lessons for companies of every size--including Microsoft itself, which has had more trademark troubles than necessary for a Fortune 100 company.

The current dispute, which Microsoft brought against Lindows.com, already has backfired against the software giant. In March, a federal district judge in Seattle denied Microsoft's request for a preliminary injunction preventing Lindows.com from using its trademark, which Microsoft said violated its own rights to the Windows trademark. In doing so, the judge said the case raised "serious questions" about the validity of the Windows trademark.

Here's why: An elementary principle of trademark law says that generic terms cannot be protected. No company could obtain trademark rights to the word "computer" to describe what we all know as a computer, for example.

As the judge in the ongoing Lindows case explained, "When a trademark's primary significance is to describe the type of product rather than the producer or source, the mark is a generic term." Generic terms can be used by anyone.

Here's another way of looking at it: If you can't think of any other term to describe a product, that term probably is generic. So, ask yourself this question: What term could the maker of a windows-based user interface (such as Lindows.com) use, other than "windows," to describe its product? If you can't think of one, then "windows" just might be generic.

As a result, if "Windows" is generic for graphical user interfaces, then Microsoft cannot prevent anyone else from using that mark--or a similar mark, such as "Lindows."

The judge in the Lindows case did not rule that Windows is a generic term. But he sure found lots of evidence indicating that it might be.

Microsoft obviously has gone to great lengths in an attempt to protect its trademark rights to the name of the world's most popular PC operating system.
Among other things, he noted that the press used the word "windows" to describe a graphical user interface for personal computers even before Microsoft launched the first version of its current operating system--and that it continues to use the term generically today. He said that a dictionary definition of "windows" matches the way it is being used by Lindows.com. And he pointed out that hundreds of other products in the computer industry include the word "windows" or variations of it.

Microsoft obviously has gone to great lengths in an attempt to protect its trademark rights to the name of the world's most popular PC operating system. According to the court, Microsoft has spent more than $1 billion marketing and promoting its Windows operating system. And it has obtained a federal trademark registration for the term (which, interestingly, the U.S. Patent and Trademark Office rejected as generic in 1993, although it later reversed itself after, among other things, Microsoft bought for about $1 million Borland's pending trademark applications containing the same term).

But sometimes, as many low-tech companies have learned through the years, no amount of effort can prevent a trademark from becoming generic. "Escalator," once a trademark used to describe a moving stairway, today is the generic term for that product. "Xerox," "Q-Tips" and "Band-Aid"--all federally registered trademarks--are in danger of becoming generic.

Microsoft's trademark battles
Amazingly, the Lindows lawsuit is not Microsoft's first significant problem with trademark law.

In a dispute with perhaps less merit, the creator of a gag gift called the "Pocket PC"--a poker chip billed as "the smallest PC in the world"--took Microsoft to court (thus far unsuccessfully) because he claims Microsoft's use of the term "Pocket PC" for its handheld operating system violates his rights to the same mark, which he began using years before Microsoft.

Sometimes, no amount of effort can prevent a trademark from becoming generic.
Although this lawsuit may fade away (given, perhaps, the dissimilarity between the gag gift and the software), it's clear that Microsoft may have the same problem with generic terms for handheld computers as it has for personal computers: Enforcing trademark rights in "Pocket PC" for a PC that can fit in a pocket puts Microsoft's lawyers in an unenviable legal position. As with "Windows," Microsoft may not be able to prevent the press from using the term "Pocket PC" generically; for example, a recent CNET News.com article described a tiny computer that runs the Windows XP operating system as a "pocket PC."

And in 1998, Microsoft paid $5 million to a defunct Internet company to settle a trademark infringement lawsuit over rights to the name "Internet Explorer."

These Microsoft trademark disputes show that traditional intellectual property protection--not just newfangled Internet patents--is vital for any successful technology company. And the disputes show how some trademark troubles can be prevented:

Always conduct--or, better yet, have a trademark attorney conduct and analyze--a thorough trademark search before using any new mark.

Although it may seem counterintuitive, consider adopting a trademark that bears no relation to the product or service with which it will be used. Although these marks take a lot more time and effort to become a recognizable brand, eventually they can become the strongest trademarks. Just ask eBay or Monster.com.

Don't be a bully. One of the great things about trademark law is that it doesn't play favorites. Just because you're a Goliath doesn't mean you'll beat every David in a trademark fight--and picking the fight could prove to be regrettable.

If only Microsoft had followed these rules, it might have avoided a lot of trademark troubles.