Forum Moderators: not2easy
Judge Coughenour ruled that once a word is generic it is always generic
and therefore cannot be registered as a trademark. The judge also ruled that
'genericness' could not be decided on how the word is understood today, but
what it meant when first shipped Windows 1.0 in 1985.[pcpro.co.uk...]
Coughenour has a history of being a bit of a maverick, with a focus on ethics and social responsibility. This is almost as good as a movie for me.
I agree with tedster: This case and the SCO/Linux case are better than most prime time shows (but I will save my tv rant for another time)
The requirements for trademark registration are that the mark needs to be distinctive as a result of "nature or nurture" - nature being where the mark is inherently distinctive say because of unique shape/etc, and nurture being where the mark has become unique as a result of use and other secondary factors. It is certainly possible for generic words to become acceptable trademarks as a result of nurturing, but it's tough and the products/services categories covered are usually narrow.
In this case, the question being asked seems to be "at the time of registration, was the 'Windows' trademark valid? was it distinctive by nature or nurture?". If not, then the registration may be struck down and the mark loses its protection, making the Microsoft case against Lindows weaker. Just because Windows may have become distinctive by nurture in the intervening time is no compensation or excuse for the fact that the original registration was faulty. This seems to be what the court is saying, and it makes for fair logic and sense.
The Lindows comment (below) is disingenuous and the conclusion is plain wrong, as it is certainly possible to buy a word out of the English language: just very expensive and the registration for it is likely to be very narrow.
"The rulings are a major victory for Lindows.com. Essentially, the Court's ruling confirms that a company, no matter how much money it spends, cannot buy a word out of the English language," said Daniel Harris, Lindows.com's lead trial counsel.
(http://www.out-law.com/php/page.php?page_id=smallvictoryforli1076593801&area=news)
It is certainly possible to trademark generic words, usually you can only trademark them for very narrow category of goods and services, and usually the words need to have a distinctive style and representation, or otherwise there needs to very strong evidence that consumers associate the words with the particular goods and services in that particular category. These are not easy criteria to meet: but exactly the kind of company such as Microsoft with Windows may be able to meet them because of its broad and wide profile across society - yet only in the narrow case of computer software. Whether they do really have a good case is less a matter of our "techy hypothesis", but more of a matter of evidence in a court of law that relies upon various objective tests.
Further to this, trademark law also protects "confusingly" similar marks, or marks that take "unfair advantage" of other marks. Microsoft may have a good claim in this against Lindows. Especially because the Lindows product is the same target product and market.
Now, a company like Microsoft is known to be very aggressive in its pursuit of trademark infringement, even in circumstances where it doesn't have a good case but does use its muscle. We need to avoid even thinking about this and focus on the specific facts of this case. It is possible that Microsoft has a good argument in this circumstance. Certainly other cases of Microsoft pursuing "Windows" as used in businesses outside of computing seem to have been overly aggressive.
