Tuesday, September 2, 2008

NY Times Spotlights Growing Importance of Trademarks

The New York Times ran on article yesterday (link here) on the growing importance of trademarks as an intellectual property asset in an e-commerce world. (HT: Marty Schwimmer’s Trademark Blog).

As the article notes, patents have often been the “stars” of the IP world – with trademarks relegated to the status of stepchild (Ed. – which I guess then makes copyrights the crazy uncle in the garage).

The article begins by citing the recent public relations fiasco the USPTO endured – and then rectified – when a month after issuing a Notice of Allowance to Dell for the mark CLOUD COMPUTING (a term having acquired a generic meaning in the computer world), the USPTO cancelled the Notice and reissued a non-final action rejecting the mark on the basis that it was merely descriptive (and most likely generic in which case it can never serve as source-identifier for Dell’s services). See articles on the Dell application at Internet News and Likelihood of Confusion®. The story of Dell’s trademark application is meant to illustrate how the internet can quickly change what might have been a protectable mark (cloud computing) into a generic term free for all to use.

So after years of patents getting all of the attention in the IP world, trademarks are finally getting their turn in the spotlight due to the growing value of brand names and increasing efforts by trademark holders to protect their valuable brands (especially online) – at least according to Stanford Law School Professor Paul Goldstein who is quoted as saying “Trademark is the sleeping giant of intellectual property.”

The article describes the first round of trademark conflict on the Internet – cybersquatting – as having subsided after Congress passed the Anti-Cybersquatting Protection Act in 1999. [Comment: Of course, the article is silent about the still-ongoing related battle of typo-squatting, domain tasting, and web directory websites]. The new trademark battlegrounds are “gripe sites” (although with fair use and free speech pretty strong defenses, is this really a battleground?) and competitors purchasing a company’s trademarks as “keywords” (admittedly a very uncertain area right now – Eric Goldman’s Technology & Marketing Law Blog keeps close track of the ongoing trademark “keyword” decisions working their way through the courts).

The article adds a little bit of nostalgia by describing trademark searching in the “old days” (circa 1979) when examining attorneys would rifle through the wooden “shoes” at the USPTO’s search room organized in such descriptive categories as “grotesque humans” (e.g., the Pillsbury doughboy) and “human body parts” (e.g., the walking fingers for the Yellow Pages). Of course, the USPTO’s online searchable database has not only made searching for trademarks easier for attorneys, but also has made the job easier for the USPTO’s 390 examining attorneys – 85% of whom work from home.

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