O'Reilly Lawyers Set Up Shop in the Patent Office

theodp writes "On the same day Netizens fumed over the trademarking of Web 2.0 (R), lawyers for O'Reilly were beating a path to the USPTO to file for a trademark on MAKER FAIRE, lest some Irish scallywag try to co-opt that catchy phrase for a conference. Speaking of NETIZENS, USPTO records show O'Reilly once sought a trademark for that term. And while details are sketchy, USPTO records also indicate that O'Reilly not only sought to trademark the term WEBSITE, it was the plaintiff in a scheduled Trademark Trial involving a defendant who laid claim to the phrase WEB CITE."

Comments

On the subject of Website...

[Kelson]

Way back in the mid-1990s, O'Reilly published a web server program for Windows called... wait for it... Website Professional. Generally abbreviated as O'Reilly Website or just Website. It was later sold to Deerfield, which incorporated it into their VisNetic line. Eventually, Deerfield dropped the product entirely.

So as crazy as it seems, they actually had a product to trademark.

Re:On the subject of Website...

[eln]

And if you actually look at the trademark application, it states that they were seeking to trademark the term as it relates to "computer software used to create a server on a global computer network and enable management of documents on the server, for use by those who access the electronic global information infrastructure". Also, the trademark application was not rejected, it was abandoned by O'Reilly.

So, the summary is a little misleading as it seems to suggest that they were trying to blanket trademark an obviously generic (even at the time) word.

Re:On the subject of Website...

[saddino]

To answer the big question:

1) There is nothing wrong with using everyday words as trademarks. Many consumer products do (just check out your supermarket aisles).

2) Trademarks, when applied for, must describe the market for their good and/or service. A trademark simply protects the good/service in that market, and does not stop anyone from using the word in any other context (or even for any other product/service, given some caveats, e.g. famous marks).

3) Trademarks need to be actively defended, so a C+D letter or even a lawsuit needs to be seen as a necessary requirement to defending a registered mark.

4) A trademark cannot be "held" to block others. A necessary requirement for keeping a trademark is production of your good and/or service. If you never produce anything, you'll lose the trademark. In other words, unscrupulous people aren't going to make much use of trademarks that they aren't actually using.

So, if "dot-net" is registered as a trademark (which it perfectly can), for say a software company or a web 2.0 service, it really doesn't affect anyone except /.ers who feel like getting worked about meaningless things.

These make sense

[Plutor]

1) Maker Faire, Netizen, and Web 2.0 are all registered for a single use: Conferences. They named a conference and they should be allowed to protect that name. If someone started running their own thing and couldn't come up with a name so they called it E3 or PCExpo, you'd expect the holders of those trademarks to sue, no?

2) The "Website" trademark application was also for a single use, in this case "computer software used to create a server on a global computer network..". Apparently, O'Reilly used to make a piece of software called "Website Professional", and it was this uninspired name they were trying to protect. Again, color me unsurprised.

This entire argument has gone back and forth a million times already, so it's kind of pointless. People who are anti-trademarks will argue that this is word-squatting and that "netizen" and "web 2.0" are public domain words. People who aren't will argue that the trademarks only cover their original uses by O'Reilly and thus using the word(s) netizen on a website or a newspaper or even the cover of a best-selling book is not infringement.

Re:patents != trademark

[Kelson]

USPTO = United States Patent and Trademark Office.

This means that in the US:
Patent Office = USPTO
Trademark Office = USPTO

So, even though patent != trademark, we can still conclude that:
Patent Office = Trademark Office

Re:In all seriousness...

[nuzak]

> When did O'Reilly stop being about making quality books and stuff and start being about creating buzzwords and catchphrases (

Around the time the "Hacks" series came out. Those are some seriously crappy books, almost without exception.

Manning Press has some really nice books out these days with the "In Action" series.

Re:Not OReilly's fault

[squiggleslash]

You don't have to file trademarks defensively. Well, let me rephrase that. If you're building a product that has an entirely new name, never before used in relation to your market area, then yeah, you need to file a trademark to ensure nobody else starts making things with the same name. Though it's arguable that's "defensive". You're defending your product against knock-offs, but you're not trademarking it for the same reason as someone might defensively file a patent. That is, you're not doing it so that if someone sues you for trademark infringement, you can sue them right back.

Defensive patents are an entirely different area. People file patents so that if someone sues them, they have some potential ammunition against them. For example, ACME Sandwiches sues you for violating their Cheese Between Two Slices of Bread patent, you in turn can see that they have a wide range of sandwiches, some of which violate your own patents, you can sue them back for violating your "Peanut butter between two slices of Ryvita" patent.

O'Reilly isn't really being "defensive" here. He's taking words that relate to things he's doing conferences on, and trademarking them. The net effect is to make it harder to come up with relevent terms to describe competing conferences. That's really being offensive, not defensive. It's not a good thing.