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Judge moves IE case forward

A federal judge clears the way for a case that could affect Microsoft's future use of the name "Internet Explorer."

A federal judge has cleared the way for trial proceedings to begin tomorrow in a case that could have a major effect on Microsoft's future use of the name "Internet Explorer."

U.S. District Judge Charles Norgle Sr. of Chicago today instructed court officials to assemble a jury pool for screening tomorrow--the best indication yet that two pending motions in the case will not delay the start of trial, according to a person familiar with the proceedings.

The trademark case was filed in late 1995 by Dhiren Rana, a software developer, who as early as 1994 applied the term "Internet Explorer" to a Web browser he designed for a Illinois Internet service provider called SyNet. The company since has gone out of business.

In court documents, Microsoft has argued that "Internet Explorer" was a descriptive or generic term, similar to words such as "personal computer" or "database."

But Norgle has so far disagreed, as has the Patent and Trademark Office. Although Microsoft had argued to the PTO that the term was not even eligible for trademark status, the agency disagreed. The application will be published tomorrow, allowing businesses such as Microsoft 30 days to object to the trademark being awarded.

Microsoft spokesman Mark Murray called the case "unfortunate," explaining that the company had gone to great lengths in 1994 to ensure no one else had rights to the name.

"We selected the name Internet Explorer after reviewing the existing record," he said, adding that "a company had tried to trademark the name and the patent office specifically rejected that in October 1994 and said that the name is descriptive."

Rana declined to comment for this story. Rochelle Alpert, a trademark litigator at Morrison & Foerster, said it's not clear which way the case will go, but that there are a number of factors that weigh in favor of Microsoft.

Tipping the scale toward Microsoft's favor include the use of the term "Internet Explorer" by other companies selling goods. A 1994 book entitled Internet Explorer Kit and a Hayes software package called Smartcom Internet Explorer are two examples the software giant cited as proof that the term is in the public domain.

Rana's case will rest on a host of points. "It depends on how broad the [other] uses of the name were, where they stem from, and what efforts [Rana] has taken to protect the trademark," said Alpert, adding that even if Rana was the first to use the term, he does not automatically own the name.

"Lots of times, you can be creating what you think is a trademark, but it becomes the general description for the product you're offering and as a result other people can use it." Perhaps the most well-known example is the use of the word "aspirin." Because Bayer, the owner of the trademark, did not challenge competitors who used the name vigorously enough, it slowly slipped into the public domain.

Alpert added that Microsoft's argument that Internet Explorer name is in the public domain is not as implausible as many have made it out to be.

Though at first blush it may appear odd that Microsoft, the world's most powerful software company, would argue that the name of one of its most visible products is generic, the practice is fairly typical among companies with household recognition, according to Alpert.

"It's a good compromise between what lawyers want, [which is] a strong, unusual mark, and what the marketers want, [which is] to describe to consumers what they're buying," Alpert said. Even if Internet Explorer is considered generic, Microsoft still would have uncontested rights to the phrase "Microsoft Internet Explorer," she explained.

Still, she noted that Microsoft is well known for taking an extremely aggressive posture when it comes to its own trademarks. For instance, over the last year, the company has challenged numerous other companies using "NT" in their names even though the initials are in fact registered to Northern Telecom.

Said Alpert: "I think there's some truth to [Microsoft's position], but my guess is that if the situation were switched around, Microsoft would be doing everything it could to show it was not generic."