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Microsoft Corp. suffered a setback in efforts to enforce its Windows trademark when a Seattle federal court ruled that a jury must consider whether the word was a generic term 20 years ago. The software giant, which is suing Lindows.com Inc. for trademark infringement, had argued that the present-day usage of the word should be considered in determining whether it is generic. But U.S. Chief District Judge John Coughenour of the Western District of Washington ruled on Feb. 10 that he would instruct a jury to consider whether the mark was generic in November 1985, when Microsoft Windows 1.0 entered the market. “If the term is found to be generic, ‘it cannot be the subject of trademark protection under any circumstances,’” he wrote, citing the 9th U.S. Circuit Court of Appeals in Filipino Yellow Pages Inc. v. Asian Journal Publ’ns, 198 F.3d 1143 (9th Cir. 1999). Coughenour added, however, that “there is substantial ground for difference of opinion” as to the timing of the word’s generic designation, and certified his order for interlocutory appeal to the 9th Circuit. The case, Microsoft Corp. v. Lindows.com Inc., No. 01-2115, had been scheduled for trial on March 1. $1.2 billion in advertising Lindows.com attorney Daniel Harris, a partner in Clifford Chance’s Palo Alto, Calif., office, said that before Microsoft launched its product, “windows” was commonly used by companies to describe an operating system’s graphical user interface. “People forget there were all these windows systems out there in the 1980s,” Harris said. Now, “after $1.2 billion in advertising,” people think of Microsoft when they hear the word. The question, he said, is “whether it is valid to create a trademark by buying a word out of the English language.” Microsoft applied for registration of the Windows trademark in 1990 and was issued the trademark in 1995. Microsoft put a positive spin on the court’s order. “We’re very encouraged that the judge granted our request to ask the court of appeals to provide guidance before we go to trial,” said Stacy Drake, a spokeswoman for Microsoft. She said the company intends to go to trial no matter how the 9th Circuit rules. Microsoft had asked Coughenour to specify the proper time to consider whether its trademark is generic. “It is one of the world’s most famous brands,” Drake said. The term should be evaluated according to “usage and the understanding of present-day consumers,” she said. Founded in 2001 by Michael Robertson, the founder and former CEO of the online music provider MP3.com Inc., Lindows.com markets an operating system called Lindows OS. It can run software applications developed for both the Linux and Windows operating systems. Coughenour ruled in favor of Lindows.com two years ago when he denied Microsoft’s request for a preliminary injunction. At that time he said there were serious questions as to whether Windows is a nongeneric name.

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