[Am-info] Judge to Rule on Validity of Windows Trademark

[Gene Gaines]

From:
http://www.wininformant.com/Articles/Index.cfm?ArticleID=27481

Wininfo
December 4, 2002  |  Paul Thurrott
Judge to Rule on Validity of Windows Trademark

Linux distribution maker Lindows.com announced yesterday that it
has submitted its final legal filing challenging the validity of
Microsoft's trademark on the term "Windows." The lawsuit was filed
after Microsoft sued Lindows.com for its use of the term
"Lindows," which the software giant says is too close to Windows
and likely to confuse consumers. A US District Court in Seattle
will now determine whether "Windows" is a valid trademark.

Microsoft filed its initial trademark infringement suit last
December, and Judge John C. Coughenour has since denied
Microsoft's two requests for an injunction, which sought bar
Lindows.com from using the Lindows name. During injunction
hearings earlier this year, the judge questioned the eligibility
of Microsoft's trademark of the term Windows, which was a generic
computing term for years before Microsoft was awarded the mark.
Indeed, as Lindows.com discovered during its legal fight,
Microsoft was twice denied trademark status for the term and was
awarded a trademark years into its efforts under somewhat
suspicious circumstances.

"We believe the indisputable historical record clearly
demonstrates that the term 'windows' was generic when Microsoft
first began using it in the early 1980s," says Lindows.com CEO
Michael Robertson, who first rose to fame when he launched
MP3.com. "We're hopeful, now that all the papers are in front of
the Judge, that he will hand down a ruling which will allow us to
get past these courtroom battles and allow us to focus exclusively
on our goal of bringing choice to computer buyers."

Though one might question Lindows.com's business viability--its
Linux distribution has suffered from poor reviews and early,
unsubstantiated claims that it would run Windows applications--the
company has effectively turned Microsoft's trademark infringement
claim into an all-out brawl that threatens the company's core
product. First, Judge Coughenour noted in March that "Lindows.com
has met its burden of proof in rebutting the validity of the
Windows trademark and the 'presumption' drops out of the case."
This means that the burden of proof moves to Microsoft, and the
software giant has had trouble meeting legal requirements for a
trademark. "Microsoft supplies minimal affirmative evidence to
support its claim that Windows is a descriptive mark that has
acquired secondary meaning and is thus protectable under the
Lanham Act," Coughenour said.

Lindows.com also has legal precedent in its favor. Regarding
trademarks and generic terms, a 1979 court ruling established the
rule, "once generic, always generic," meaning that generic terms
such as windows cannot be made trademarked even after years or
decades of use as product names. This rule has been tested
repeatedly in court, but always upheld. In fact, in the 1979 case
cited previously, a federal court ruled that "a 'generic' word
cannot be validly registered as a trademark even if there is proof
of secondary meaning. The reason is plain enough. To allow
trademark protection for generic terms ... would grant the owner
of the mark a monopoly, since a competitor could not describe his
goods as what they are."

It's unclear what will happen if Microsoft loses its trademark.
... more

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I believe Lindows has a valid trademark.
I also believe that under the law Microsoft does not.

Gene Gaines
gene.gaines@gainesgroup.com
Sterling, Virginia