Trademark

[ShannonA]

I found the following Opinion on a trademark case entirely interesting:
http://www.cwrl.utexas.edu/%7Ecraft/flex/994389.html

It talks about how it is and isn't permissible to use someone else's trademark, and also about the statute of limitations for trademarks.

It's Charles Atlas vs. DC Comics and centers around a character called "Flex Metallo" from Grant Morrison's Doom Patrol.

Shannon

[ShannonA]

Another interesting addendum:
http://slashdot.org/article.pl?sid=04/05/18/1227218&mode=nested&tid=126&tid=217&tid=95&tid=98&tid=99

This is slashdot's report on some gal trying to make a fast-buck off of the Google IPO. It seems that this gal's grand-uncle invented the word "googol", which is a 1 followed by a 100 zeroes. She's now considering suing Google because they've used a version of the word without permission.

Of course, she doesn't have a registered trademark on googol, while google does have an uncontested registered trademark (http://tess2.uspto.gov/bin/showfield?f=doc&state=c0d9n4.3.16). Likewise, there's no way that copyright would cover a single word.

It shows you dangers of not understanding how IP law works. You look really dumb.

(It also shows why you do register trademarks: so that you have an incontrovertible trail of usage when you're successful enough that litigious people start coming out of the woodwork.)

Shannon

[Kalle]

Originally posted by ShannonA
Likewise, there's no way that copyright would cover a single word.

That's interesting, though. Recently, Microsoft managed to threaten (and get the court to initially agree) companies in Sweden who sold the Linux software "Lindows", because the name was too close to "Windows".

It's beyond bizarre that such a multi-purpose word as "Windows" can be considered any kind of trademark.

-Kalle.

[ShannonA]

I've heard that's going back to court, with the question being whether "Windows" was in common usage as a computer term prior to the release of the first MS Windows.

(The question isn't, "Is it a common word?", but rather "Is it a common word in relation to the computer field?". It's trademarkable if the former is true, but not if the latter is true. Which is why, say, a car company could trademark the word "Nova" as a car, even though Nova is clearly a common usage word for stellar phenomenon.)

Shannon

[Vengeance]

The issue in the Lindows case is that the name is *intended* to confuse the market about the product's capability in a space where the product is in direct competition with the product it is trying to confuse.

It is like making a new soft drink and calling it Koka-Kola, and advertising that it tastes exactly the same as Coca-Cola.

The fact that the word is in common use is irrelevant in this case, because of the potential for deceptive use and confusion.

On PlaneShift, we are often questioned about our name because WOTC has some sort of card game with the same name. We have not had any challenges from them on the name--probably because they are not aware of us. If we are challenged, we would respond back that a) we are not confusing the market because we are an MMORPG, not a card game, b) our use of the name started in 1992, which predates WOTC's use by at least 7 years. Prior art is a way to invalidate a patent. Prior use is a way to nullify a trademark challenge.

One other note: Because of the legal requirement to defend trademarks in order to keep them, companies err on the side of challenging everything. Just because you get a letter doesn't mean you need to freak out and rename everything. Respond back with another letter explaining why your name isn't infringing on their trademark and 95% of the time you will never hear from them again. This is because their purpose in challenging you is probably not to make $millions from you, but so they can show later, in a real dispute, how they have a history of defending their mark.

My $.02,
Vengeance

[Syrona]

Oops, I misread.

Must agree with the Vengeance fellow.

For instance, there's a line of downriggers that are called Canon, and cameras called Canon. Both can be happily TMd to eachother because they're in no way related..but since Windows is TM computer wise, if someone tries to market off it - and Lindows does, because of its similarity - Windows'd win.