Posts tagged with trademark

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April 16, 2009 — laurenhenry

Mozilla and Trademarks

The Mozilla Foundation produces and distributes open source software, notably Firefox and Thunderbird. Since 2005, the Foundation has had a for-profit subsidiary, the Mozilla Corporation, which deals with the development and marketing of Mozilla technologies and products. The Mozilla Corporation shares the aims of the Mozilla Foundation, and reinvests all of its profits towards the mission goals of the Mozilla Foundation.

The Mozilla Corporation was established “to support the Mozilla Foundation’s mission to ensure choice and innovation on the Internet by leveraging the economic value of Firefox which has resulted from its growing marketshare. By forming a commercial subsidiary, the revenue-generating activities of the new entity can provide funds to support development, testing, and productization of the various Mozilla open source technologies.” Basically, though its conception was not profit-motivated, Firefox turned out to be such a good and widely-used product that its use could be monetized.  It just made sense to make use of that revenue stream to help support the organization.

Mozilla is a respected and well-known organization. Its model is nontraditional and generative. Its software is open source and free to use, and others are free to distribute and modify them. All the content of its site is copyrighted under a Creative Commons license. Interestingly, most effective restrictions on what one can do with Mozilla’s software stem from Mozilla’s trademark policy. Mozilla is happy to let you do what you want with its software, but there are limitations to how you can talk about and brand what you’ve done.

Read the rest of this entry »

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April 15, 2009 — Patrick D

Googlejuice?

Image courtesy of http://cssjockey.com.

Image courtesy of http://cssjockey.com.

Since Google.com’s inception in 1998, the search engine has quickly grown to become a part of the everyday vernacular.  A few years ago, both the Merriam-Webster and the Oxford English dictionaries added the term “google” to their official list of English words, as it had become clear that the world-famous brand name was more than just your garden variety “fanciful” trademark.  “Google” is widely used today as a verb, sometimes referring to use of the search engine itself — “Heyo, I googled that guy we met last night…Bad news…” — and other times simply a slang replacement for “to search for” — “I’ve googled all over the house for my shoes and can’t find them anywhere…” This use of “google” with a lowercase “g” has manifested a heap of issues for the company’s lawyers, as its induction into the realm of “generic” terms threatens to loosen their grip on the beloved trademark.

William Fisher’s “Overview of Trademark Law,” explains that “[a] word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer.”  It is a phenomenon some have called “genericide,” whereby a trademarked term is legally demoted from “trademark” status.  Genericide has taken the corporate soul out of many former trademarks, most of which we don’t even recognize today as brand names: xerox, thermos, kleenex, rollerblade, band-aid, among countless others.

Many of these companies have taken action to prevent the demise of their trademarks, but to no avail.  An article from the LA Times points out that the lyrics of one of the most famous commercial jingles, the one created by Johnson & Johnson for their brand of sticky bandages known as “Band-Aids” — “I am stuck on Band-Aid brand ’cause Band-Aid’s stuck on me” — includes the word “brand” not just because it’s cute when little kids try to pronounce it: it was also a desperate effort to emphasize that “Band-Aid” is, in fact, a brand.  The same article points out that Xerox Corp. embarked on a similar campaign to reduce the frequency of their trademark “xerox” as used to refer to the act of photocopying.  Google, aware that it might soon fall into the same boat as the others, has begun shooting off C&D letters to websites like WordSpy who appear to be perpetuating Google’s non-brand-specific usage.  Here’s a screenshot of WordSpy’s official definition of the term:

snapshot-2009-04-15-11-50-27
Noteworthy is that this definition, unlike those located in the OED or Merriam-Webster, pushes the generic usage, adding the phrase “particularly by using the Google search engine” as a kind of afterthought.  Originally, no mention of Google (with a capital “G”) existed, until Google’s C&D letter requested that WordSpy remove or modify their definition “to make sure that when people use ‘Google,’ they are referring to the services our company provides and not to Internet searching in general.”  A special note now follows the WordSpy definition: “Note that Google™ is a trademark identifying the search technology and services of Google Technologies Inc.”  Despite their shout-out to the Google trademark, however, the site goes on to offer citations “illustrating the more general sense of the verb.”  What is more, WordSpy includes a slew of other new terms that have been inspired by “google as a verb.”  Some noteables:

“fridge Googling” – pp. Running an Internet search based on some or all of the contents of one’s fridge, looking for a recipe based on those contents.
—fridge Google v.

“googleability” - (goo.gul.uh.BIL.uh.tee) n. The ease with which information about a person can be found on an Internet search engine, particularly Google.  Also: Googleability, googlability, google-ability.
—googleable adj.

“googleverse” – n. 1. The products, services, and technologies belonging to or associated with Google Inc.  2. Web pages, newsgroups, images, and other content indexed by the Google search engine. [Blend of Google and universe]

and my personal favorite,

“googlejuice” – (GOO.gul.joos) n. The presumed quality inherent in a Web site that enables it to appear at or near the top of search engine results, particularly those of the Google search engine. Also: Google-juice, Google juice.

As with the definition of “google” itself, all of the above terms subtly push for genericness, clearly preferring to use the more general phrase “Internet search engine.”  Unfortunately for Google, in the face of this seemingly viral usage of its brand name in everyday speech, its lawyers really have no legal recourse.  Genericide is simply a social phenomenon with legal implications, manifested by a world where widespread communication leads to widespread notoriety.  I suppose today’s internet companies, if they wish to keep hold of their trademarks, ought to be careful what they wish for before dumping millions of dollars into becoming “a household name.”  Google must now struggle under the weight of its own astonishing popularity, or risk witnessing the end of legal protection for one of the world’s most recognizable trademarks.  One might argue that Facebook and Wikipedia are on the same course, though the terms so far have managed to refer only to their websites.  Still, the risk is in sight.  How many times have you said, “Dude, I got NO work done last night.  I couldn’t stop Facebooking,” or, “Seriously, Wikipedia that s***.”  The era of internet verbification has begun.  As a kind of ironic harbinger, Wikipedia itself even features a page devoted to the use of “google as a verb.”  I won’t link you, though.  Just google it.

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April 14, 2009 — Robert B

The Future of the Internet and How Governments Are Stopping It

I feel sorry for the French. When it comes to the Digital Age, they just seem to not get it. On multiple occasions, they have proven that they don’t get online advertising, they don’t get how trademarks are used and diffused in today’s connected culture, and they just seem to not get the Internet in general. Read the rest of this entry »

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April 14, 2009 — Bonanza C

A Monster in Trademark

I initially intended to blog about how trademark laws largely accomplished their goal of reducing search costs for consumers. While this week’s readings brought up recent court rulings that misinterpret trademark law (the “use” of trademarks as keywords and selling ads to competitors of that trademark owner), it seemed that the laws themselves manage to limit the potentially damaging aspects – controlling language to restrict competitors – with the benefits of trademarks – conveying information about the product to consumers. And after weeks of bashing on copyright and patent laws, I wanted to believe that trademark was one area in our legal system that was more balanced and fair.

After finding out about the trademark history of Monster Cable, it became a bit more difficult to support this position. Some background should be given on Monster first. Monster Cable was founded in 1979 and primarily makes cables for audio products. They’ve expanded into making cables for other products as well, such as gaming consoles, computers, TVs, and cars. Basically, looking at their main site, you get the idea that their primary business comes from cables.  That, and for some reason, they also sell mints.

As a trademark, Monster Cable would most likely fall under the arbitrary/fanciful category since Monster has no relation to the cables themselves. As an arbitrary trademark, Monster would have strong trademark protection. At the same time, the protection arguably would not be so strong outside of cable-related products.

With this in mind, it was a surprise to find out how aggressive Monster has been in protecting its trademark on “Monster”. Monster Cable has over 70 trademarks on the generic word “Monster,” has filed over 190 actions at the PTO, and has pursued 30 lawsuits on trademark infringement. Here’s a list of some of the businesses they’ve pursued, either through lawsuits or through appeals to the PTO:

  • “Monster Transmission” – a Florida company that makes automotive partsmonstertransmission
  • “Junk Food Monster” – A woman that sells tshirts that say “Junk Food Monster” on it to promote good eating habits. Her trademarks on “Crash Monster” and “Pollution Monster” promote similar good habits and have also been appealed. (Image taken from their file at the PTO)
    junkfoodmonster
  • “Monster.com” – Website owned by Monster Worldwide, Inc. that offers employment-searching services.
    monsteremp
  •   “Slim Jim Monster” – Meat-snack sticks from ConAgra Foods.
    slimjimmonster 
  • “Monster Mini Golf” – 18-hole indoor putting greens.
    monsterminigolf 

Monster Cables has also pursued large companies such as ConAgra Foods (the meat snacks above), Disney (their “Monsters, Inc” movie), and the Boston Red Sox (“Green Monster” food sold in the stadium).

Monster Cables defended its actions by stating that it had to defend its “famous” trademark since it had invested so many resources into developing the goodwill. In an open letter on their website, Monster Cables and its founder Noel Lee listed some of the trademarks that they owned in defense of their aggressive actions. Some of the trademarks were:

  • “Monster” – Sporting goods
  • “Monster attitude” – clothing such as sweatshirts, jackets, pants, tshirts
  • “Monster music” – compact discs

I highly doubt that there was any consumer confusion between Monster meat-snack sticks and Monster cables. Given this, I didn’t expect any of these appeals or lawsuits to be very successful. Thus, it was even more surprising to find that Monster has been fairly successful at getting others to either settle out of court or to abandon their trademark applications. For example, the Discovery Channel’s “Monster Garage” settled and paid licensing fees to use the trademark. Also, of 87 opposition filings at the PTO, 20 eventually abandoned their claims. These abandonments may have been due to financial reasons. Thus, the most alarming aspect of all of this is Monster Cable’s attempts to construct barriers to competition through the control of the generic term “Monster,” and their actual success at doing so. Monster’s actions could cause other companies with legitimate trademarks to circumvent certain words out of fear of lawsuit. This would then raise search costs, since consumers cannot use certain words to find a certain product. This of course runs counter to the purpose of trademark law, which was meant to foster competition and to lower search costs, not raise them. 

However, there’s a silver lining to all of this, I think. The majority of Monster’s success was not from any court ruling, but from out of court settlements. In addition, in lawsuits and applications that persisted through the process, Monster was often forced to drop the case altogether. For example, in the Monster Mini Golf case, Monster Cable eventually gave up and paid the defendant’s legal fees. Furthermore, any lawsuits that Monster tries to pursue on some of their 70 trademarks (such as their trademark on clothing) will most likely not succeed; they’ve probably lost their rights to it through a lack of use. It seems then that the problem is not in trademark law, but rather a more general problem of litigation costs. 

Thus, my original hope of trademark law as being balanced and fair appears to be intact. While there still remains certain issues in litigation costs and with search engine liability in trademarks, monsters are unable to exploit their  trademarks to prevent fair competition in a court of law.