A few weeks ago, I knew little about trademark law. I understood that I preferred knowing that if I went into a store and bought something called Coca Cola, that I would get a bottle or can of the soft drink I’ve known and loved for most of my life. Thus, I never really thought of trademark as anything but benign.
Then, I read the articles Darrell, Jeff and others wrote about the FS v. Serotek case and listened to my wife Susan as she described a trademark case she worked on in law school and suddenly this branch of IP law became a lot more interesting. This morning, I read an article called, “Microsoft sued over Windows Vista name,” in PC Advisor.
In the United States, a trademark must be “protected” through regular use and by assertion of property. A trademark can turn into a generic name if its owner does not claim ownership of said name. The most famous of the cases where a trademarked name moved from proprietary to public domain is the word “Aspirin.” Once, the Bayer company owned the word aspirin but due to lack of assertion of their ownership, the word fell into the public domain and now appears on the bottles of every company that manufactures the popular analgesic. Other words like “catsup” and “ketchup” have had similar fates. Some companies, like Kimberly Clark, for instance, have fought very hard to keep the word “Kleenex” from becoming a generic term for facial tissue and Xerox has struggle to keep its corporate name from becoming both a noun and verb that generically described “a photocopy” and “making a photocopy.” With the recent popularization of the word “google” as a verb, I wonder how the search giant will fight back to protect its trademark?
The article about Vista reads: ‘A French television presenter has sued Microsoft for “violation of intellectual property”. Philippe Gildas accused the
Software publisher of illegally using the trademark “Vista”.
‘Gildas registered the Vista in October 2003. This was two years before
Microsoft registered its Windows Vista trademark with the INPI (French National Institute for Intellectual Property).
“Philippe Gildas had registered the Vista trademark for a television channel aimed at senior citizens, Télé Vista, which was to have launched in 2003. The
Télé Vista project was delayed, but is now coming to fruition, with plans to launch the channel later this year.
‘Gildas sees Microsoft’s hogging of the limelight with its new Vista
operating system as an obstacle to that launch, and so he decided to sue, arguing that he registered the Vista trademark “in all entertainment and media categories: press,
television, web and so on.”’
I can think of lots of other commercial uses of “Vista.” LakeBuena Vista, over at Disneyworld comes to mind as a long standing entertainment use of the term. A friend of mine owns Vista Travel in Cambridge, Massachusetts. Buena Vista homes in Colorado may have a claim as they have an entertainment center. If I remember long enough ago, I think there was a car, perhaps a Dodge, called Vista but I’m not sure.
I don’t know anything about French or EU trademark law. In the EU, patents go to the individual who is first to file for a patent on an invention; in the US, patent protection is afforded the first to invent so, if you can show that you have invented the concept prior to another filing for a patent, you can maintain ownership. So, if patent law has such a fundamental difference, maybe trademark does too.
Frankly, I doubt too many people will mistake a television show aimed at elders with an operating system and I doubt anyone will mistake New Freedom feminine napkins with Freedom Scientific but one never knows in this whacky world of predatory litigation who might get sued for what. Hell, Donald Trump tried to get a trademark on the term, “You’re fired!”