Read our latest coverage of patent law issues, from Silicon Valley to the U.S. Supreme Court.
Call it too much of a good thing.
“The success of the Web 2.0 conferences and the usefulness of the term admittedly complicate the Web 2.0 trademark situation,” he wrote.
In the end, CMP and O’Reilly backed off, allowing the groups to use the phrase and mollifying critics. Trademark attorneys doubt the company would be able to assert its right in the future.
“Usage caught up and surpassed them. If Web 2.0 now means the Internet for the modern world or for 2006 or for the resurgence of the Internet, then CMP will have a hard time enforcing their trademark rights, even for ancillary things like conferences,” said Douglas Hendricks, a trademark partner at Morrison & Foerster in San Francisco.
FAST TRACK TO GENERIC
The swiftness with which the Web 2.0 mark has joined the trademark graveyard containing once-famous brands such as Aspirin, Cellophane and Yo-Yo is a case study of how the Internet’s reach can hurt as well as help trademark owners.
Typically, trademarks become generic � used to define a category of products, not just one � only after years of consumer misuse of the name.
For example, trademark attorneys say, it took the escalator, invented in 1892 and trademarked by the Otis Elevator Company in 1899, 58 years to become officially a generic term representing all “moving stairway” products.
Many people today ask for a Kleenex when any tissue will do, and there are parts of the country where asking for a Coke can be a request for almost any fizzy drink.
Many companies now struggle with trying to balance their desire to make their brands a household name but not to the extent that it loses their uniqueness. Google, for instance, zealously monitors online usage of its brand to keep it from entering the English language.
In 2003, for example, Google asked Wordspy.com to remove or revise from its online dictionary the definition of “google” as a verb. Wordspy complied by adding a note after the definition informing readers “that Google TMis a trademark identifying the search technology and services of Google Technologies Inc.” The company still routinely sends out letters to people.
“You have to start early to avoid a bigger headache later on,” Garhart said. “Xerox had to spend a lot of money to stop people from misusing its core brand name.”
The company that popularized the photocopier invested in a campaign blitz that included ads that said: “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache.”
One famous anti-generic ad run by Rollerblades even pokes fun at the theory behind such advertisements, stating, “This message comes to you courtesy of our attorneys, who are correctly referred to as ‘extraordinarily anal.’”
Martin Schwimmer, a New York trademark attorney who runs the popular Trademark Blog, blames CMP for its own bad experience with enforcing its mark and for overlooking the power of the Internet.
“Web 2.0 started off as a perfectly fine mark,” Schwimmer said. “But the point here is that CMP forgot that it is very difficult to combine selling a brand and selling it as a buzz word. In the age of the Internet that’s very dangerous. A lot of people are going to use it very quickly.”