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A federal court in Seattle has ruled that Microsoft’s case against Lindows.com Inc. must go to trial on the issue of whether the term Lindows.com has infringed Microsoft’s Windows trademark. The court was unable to determine whether Windows is a generic term incapable of trademark protection, thus necessitating a trial of the issue. The stakes obviously are high for both companies. FACTUAL BACKGROUND Microsoft Windows and Lindows OS are competing operating system products. An operating system in essence is the “command center” of a personal computer, controlling the use and allocation of computer resources and supporting the functions of software programs that undertake given tasks such as word processing. Microsoft launched Windows 1.0 in 1985. Microsoft applied for registration of its Windows trademark in 1990, and following an initial rejection of the initial registration attempt by the Patent and Trademark Office in 1993, a trademark registration issued in 1995. Lindows.com was founded in July 2001. The company’s Lindows OS product is an operating system that is based on the Linux operating system and is capable of running applications for both the Linux and Windows operating systems. MICROSOFT’S LAWSUIT Microsoft filed its case in December 2001. Microsoft alleges that Lindows.com is using a name that violates trademark law because it trades off of the goodwill of Microsoft’s Windows mark, causes confusion among prospective purchasers of Windows products and dilutes the ability of the Windows trademark to distinguish Microsoft’s products from those of other producers. PROCEDURAL BACKGROUND Relatively early in the case, Microsoft filed a preliminary injunction motion designed to prevent infringement of the Windows mark by Lindows.com. The court denied Microsoft’s motion, finding that there were serious questions whether Windows was non-generic and thus eligible for protection of federal trademark law. Picking up on this cue, Lindows.com then filed a motion for summary judgment. In that motion, Lindows.com has argued that Windows is generic, and therefore is not protected by federal trademark law. THE COURT’S SUMMARY JUDGMENT RULING In considering Lindows.com’s motion, the court referred to case law holding that a term is generic if it is “one that refers, or has come to be understood as referring, to the genus of which the particular product or service is a species.” In other words, a generic term is “the name of the product or service itself” and therefore “the very antithesis of a mark.” At rock-bottom, the court looked to the “who-are-you/what-are-you test.” Under this test, if the mark answers the buyer’s question “who are you?” or “where do you come from?”, the mark is valid as it refers to a particular producer of the goods or services. However, when a mark answers the buyer’s “what are you?” question, the mark must be generic and invalid because “it is identified with all such goods or services regardless of the producer.” Lindows.com argued that derivatives of the term windows, including “windowing” and “window,” are generic adjectives that prove the generic nature of Microsoft’s “windows” term. Lindows.com supported its motion with evidence demonstrating repeated references to compound terms such as “window manager” and “windowing environment.” Lindows.com also asserted that companies such as Xerox, Apple and Digital Research have used the term “windows” generically since the mid-1960s. Furthermore, Lindows.com collected 126 articles and publications that apparently show that “windows” has been a generic term for graphical operating environments. Microsoft countered the showing of Lindows.com with its own evidence. Notably, Microsoft cited to a review of 2,233 articles from computer-user magazines and the general press from 1983-1986 to evaluate the use of the term “windows” in the media. From this review, Microsoft’s expert concluded that “only 1.5 percent of all uses in 1983 and 2 percent of total uses represented the use of a “window” term to describe a type of program or operating environment.” At the end of the day, the court concluded that both sides presented significant evidence supporting their arguments. Accordingly, the court was not able to make a ruling prior to trial as to whether or not Windows is a generic term that is incapable of trademark protection. Thus, the case must proceed to trial. ‘GENERICIDE’ The stakes in this case are high for both Microsoft and Lindows.com. Microsoft has invested substantial sums of money in Windows branding and it plainly wants to protect its mark. Lindows.com, on the other hand, has done its own branding and could stand to benefit in the marketplace if Windows is deemed a generic term that cannot be protected. Some companies are likely to be watching this case for fear that some of their own marks may be subject to “genericide.” Meanwhile, other companies may be licking their chops for the marks of their competitors being deemed generic. Eric Sinrod is a partner in the San Francisco office of Duane Morris ( www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. His Web site is www.sinrodlaw.com, and he can be reached at [email protected]. To receive a weekly e-mail link to Mr. Sinrod’s columns, please type Subscribe in the subject line of an e-mail to be sent to [email protected].

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