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Groklaw Explains the Cyberlaw "Trademark"

Posted by kdawson on from the black-letter dept.

I Don't Believe in Imaginary Property writes "PJ of Groklaw has written in more detail about the lawyer trying to get a servicemark on the term 'cyberlaw'. (We discussed this here a few days back.) First, she notes that it's only a trademark application at this point. Furthermore, 'cyberlaw' is a generic term with 300,000+ hits on Google and an entry in some dictionaries and reference sites. In other words, while it's silly for a law firm that should know better to file a trademark application, it shouldn't and probably won't be granted if the law is followed. The article is interesting because it spells out the difference between trademarks and servicemarks, as well as explaining the law surrounding them — a law that differs significantly from copyright law."

37 comments

  1. "Service mark" by smittyoneeach · · Score: 1

    "Service mark"
    Means "jumped the shark".
    Gone with you then,
    Cyber-highwayman
    Burma Shave

    --
    Get thee glass eyes, and, like a scurvy politician, seem to see things thou dost not.--King Lear
    1. Re:"Service mark" by Anonymous Coward · · Score: 0

      Note the double entendre in "jumped the shark".
      There is the obvious "Happy Days" allusion,
      http://en.wikipedia.org/wiki/Jumping_the_shark,
      but jump can also mean "to attack or pounce upon without warning, as from ambush",
      and shark is a highly colloquial term for a lawyer

    2. Re:"Service mark" by thePowerOfGrayskull · · Score: 1

      Note the double entendre in "jumped the shark".
      There is the obvious "Happy Days" allusion,
      http://en.wikipedia.org/wiki/Jumping_the_shark,
      but jump can also mean "to attack or pounce upon without warning, as from ambush",
      and shark is a highly colloquial term for a lawyer Hm, shouldn't you have posted all that in your original post Smitty? ;)
    3. Re:"Service mark" by smittyoneeach · · Score: 1

      Nah, didn't want to screw up the Burma Shave post with an aside on the Happy Days reference. The double entendre actually occured to me after submitting.

      --
      Get thee glass eyes, and, like a scurvy politician, seem to see things thou dost not.--King Lear
    4. Re:"Service mark" by thePowerOfGrayskull · · Score: 1

      heh - I was mostly referring to the AC post. Nice play on words, though.

  2. Why does the website already show "TM"? by langelgjm · · Score: 2

    For me, the website in question already shows "TM" after the word CyberLaw. It's also the fifth hit on Google. If all they've done is apply for the trademark, are they still allowed to used the "TM" mark?

    --
    "Anyone who [rips a CD] is probably engaging in copyright infringement." - David O. Carson
    1. Re:Why does the website already show "TM"? by MacarooMac · · Score: 2, Informative

      I noticed that too. According to this site an "Intent-to-Use" application is made when the TM is NOT being use yet whilst a "use-based" application is filed when it's already in use.

      --
      "He Who Dares Wins" ...or gets twenty-to-life for totaling their Bimmer on a poodle parade
    2. Re:Why does the website already show "TM"? by artisteeternite · · Score: 4, Informative

      You can use "TM" without filing an application. All "TM" does is give others notice that you are using this as a trademark. "(R)", on the other hand, can only be used after you have been officially registered with the federal government (state registration isn't enough to be able to use "(R)") and you can get in big trouble if they catch you using it without being federally registered.

    3. Re:Why does the website already show "TM"? by __aayurq3262 · · Score: 4, Informative

      If all they've done is apply for the trademark, are they still allowed to used the "TM" mark? Short answer: Yes. All it takes to obtain trademark or service mark rights in a mark is to start using it. Those rights are referred to as "commmon law" rights. Putting a TM (or SM) near the mark is just a way of emphasizing to the rest of the world that you claim the common law rights that the common law automatically gave you. You can even use the TM if you've never filed a trademark application and even if you've been denied registration. Microsoft used the TM next to Windows even though the US Trademark Office ruled that they were not entitled to registration.
    4. Re:Why does the website already show "TM"? by ThreeGigs · · Score: 1

      So... what if someone else stuck a TM after Cyberlaw?

      Like this:
      http://www.swcp.com/~zialink/patent.htm

      or this...
      http://www.sjgames.com/SS/cyberlaw.html ...and seems the term has been leveraged before, in court:
      http://www.oss.net/dynamaster/file_archive/040320/c378876cc036a94572ec64d1b6f1258f/OSS1993-01-29.pdf

  3. Re:WHO'S THE FUCKING ASSHAT?!? by Anonymous Coward · · Score: 0, Funny
    Taco has taken usability hints from the Gnome devs, if you want to actually read slashdot you have to manually hack the URL like this...

    &no_d2=1&mode=nested&threshold=-1&js=sux0rz&taco=blow_me
  4. *If the law is followed? by Mateo_LeFou · · Score: 1, Troll

    We can rely on that now? I hadn't heard...

    --
    My turnips listen for the soft cry of your love
  5. Made us look... by Furmy · · Score: 0

    Well, you made us look.
    At their site.

    TM or not, they've got the publicity they wanted.

  6. Just a poort shmoe trying to make money by sigzero · · Score: 1

    That is all it is about.

  7. Trademark by Mark_MF-WN · · Score: 1
    It's sad that the article has to explicitly state that copyright laws and trademark laws are different.

    This is why the concept of "intellectual property" has to be dispensed with immediately. It creates the erroneous impression that trademarks, servicemarks, copyrights, and patents are all somehow related, and that they have something to do with the notion of real ownership of tangible things. But of course they are not related, and they having nothing to do with true ownership.

    The concept of intellectual property is only useful for tricking stupid corporate sycophants into believing that corporations have the right to dictate what the rest of us think, say, and do.

    1. Re:Trademark by __aayurq3262 · · Score: 1

      ...the concept of "intellectual property" has to be dispensed with immediately. It creates the erroneous impression that trademarks, servicemarks, copyrights, and patents are all somehow related, and that they have something to do with the notion of real ownership of tangible things. But of course they are not related, and they having nothing to do with true ownership. The term "intellectual property" is quite useful for exactly the reason you object to it. It refers to property that is not tangible. It's useful to differentiate tangible property from intangible property no matter which side of the debate you are on. There are lots of different types of tangible property, from land to zebras, with all kinds of varying rules that apply to maintaining and transferring ownership, but we still consider all that stuff to be tangible property.

      Terms like "real ownership" or "true ownership" don't do much to clarify the argument either. The concept of ownership is just as intangible as the concept of copyright. Theres nothing "real" or tangible about ownership. "Ownership" is just shorthand for legal rules that have developed in our society over thousands of years to prevent conflict. You are the "owner" of property when the rules say you are. Property is "property" because the rules say it is capable of being owned. Our current rules say that intangible items like copyright can be owned, so under our system it is intangible property created out of thin air by intellectual effort. Sounds like "intellectual property" to me.
    2. Re:Trademark by sepluv · · Score: 1

      It refers to property that is not tangible.

      The whole point is that most people who have looked into this (including many experienced legal academics) don't think "intellectual property" is property (in part, because it is not tangible) and believe it is unhelpful, and even divisive, to call it that. Please bear in mind that it is a matter of public record that the term "intellectual property" was first used in the name of WIPO, and, whatsmore, was intentionally coined by the stakeholders who were behind that organisation to alter the terminology the next generation of law students would use as a first step in their stealth campaign to expand their legal rights.

      Don't get me wrong, I do understand the analogy between the two; I just think it is too tenuous to be useful. We believe property is by definition tangible (and your dictionary will probably agree).

      There are lots of different types of tangible property, from land to zebras, with all kinds of varying rules that apply...

      The rules are all very similar though, and, most importantly, the nature of ownership (i.e.: the basic meaning of "own") is the same for all of these. Your claim they are all property regardless of tangibility because they both can be owned is difficult to swallow as one tells who owns something by who has physical control of it. Ownership is transferred through a transfer of physical control. How would this work with intangible "property". In fact, if you think about it; what control "ownership" confers; how one can tell who "owns" something, and how one and whether one can transfer "ownership" varies between all the exclusive rights you call "intellectual property". (Also, note that copyright, patent and trademark legislation in most jurisdictions are careful to never mention "property" or "ownership" as these terms have specific legal meanings that don't apply to such rights).

      The concept of ownership is just as intangible as the concept of copyright.

      No. Something you own, exists; the thing you hold a copyright on does not (and is merely a legal fiction).

      There is no similarity in any aspect of the detail of the laws relating to different exclusive intellectual exploitation rights (or "intellectual property"). In fact, Even the type of law varies: some are covered by criminal, some civil and some both (and in some countries, are covered by different jurisdictions such as federal and state). What counts as "ownership" or, more accurately, what exclusive rights one has in the criminal and civil law in relation to a single right may vary.

      Bringing this back on topic, trademarks are designed to stop sellers passing off goods as something they are not. They do not restrict the usage of that language in non-commercial situations. They, therefore, bear much more relation to other consumer laws than to copyright law.

      --
      Joe Llywelyn Griffith Blakesley
      [This post is in the public domain (copyright-free) unless otherwise stated]
    3. Re:Trademark by Mark_MF-WN · · Score: 1

      The term "intellectual property" is quite useful for exactly the reason you object to it. It refers to property that is not tangible. It's useful to differentiate tangible property from intangible property no matter which side of the debate you are on. There are lots of different types of tangible property, from land to zebras, with all kinds of varying rules that apply to maintaining and transferring ownership, but we still consider all that stuff to be tangible property.
      The laws you mention about real property are nothing more than tools for settling disputes. The concept of property transcends them. In virtually every culture on Earth that has ever been, from hunter gatherers right on up to modern day citizens of nation states, the notion that the physical objects on my person are mine is present. Even a child of two years old feels that he has been wronged if you take what he has.

      But if that same child of two draws a picture, and one of his peers draws one that is similar, it is rare and unusual that he will feel he has suffered any kind of loss. He may think less of that peer, but he does not feel that same sense of loss as if his favourite crayon were stolen from him. If you look at primitive cultures, they didn't arrange for elaborate systems of punishment to deter one group of people from singing the songs invented by another. Duplicating books was considered to be a great social service that monks performed for free to better themselves and others. Before the invention of the printing press, most culture and knowledge was passed on exclusively through what we would now laughably refer to as "piracy".

      Like it or not, anything intellectual is inherently the very opposite of property, because it can never be stolen (at least not without some very cunning neurosurgery or the application of a sturdy mallet to the cranium).

      "Knowledge is like a candle. When you light your candle from mine, my light is not diminished. It is enhanced and a larger room is enlightened as a consequence." -- Thomas Jefferson

      But, if you truly believe that a set of rules invented by bureaucrats is more important than people's actual sense of what is right and what is wrong, go ahead. Your blind acceptance of law will make you a great sycophant to whatever corrupt and destructive government happens to be in power. You would have been one of the people who went around during the age of prohibition insisting that everyone should follow the law and accept it as "right", without even the tiniest shred of critical thought.

  8. Good overview, but note... by cenonce · · Score: 2, Insightful

    PJ as usual gives a good overview of what is going on. What she doesn't really spell out is that the mark needs to be viewed in reference to each one of these services. It is possible that CYBERLAW, when used in connection with some of these services, is descriptive, and not really generic. However, in this case, it may be so highly descriptive with any of these services that no amount of evidence will be sufficient to prove "secondary meaning" (i.e., acquired distinctiveness) - which just means that CYBERLAW for this guy will never become like INTERNATIONAL BUSINESS MACHINES has for IBM. In that sense, the difference between generic and descriptive is pretty moot.

    It always concerns me when I see a laundry list of goods and/or services in an application, especially in this case, when most, if not all, of the services listed generally fall under the USPTO accepted identification of "legal services". That it is often a sign of an inexperienced trademark attorney.

  9. So what if it is a generic term by houghi · · Score: 1

    Widows is a generic term. Shell is a generic term. Word is a genric word.

    --
    Don't fight for your country, if your country does not fight for you.
    1. Re:So what if it is a generic term by ricegf · · Score: 1

      Widows is a generic term.

      You probably mean Windows. If so, then note that Microsoft uses (tm) and not (r) - because it hasn't been successfully registered. Also remember that they paid Lindows $20 million to drop the countersuit alleging that Windows is an improper trademark (and of course, changed Lindows to Linspire). Being a rich monopolist has its privileges.

      Shell is a generic term.

      For gasoline? You honestly say, "Honey, we need to stop for some shell"???

      Word is a genric word.

      Yes, for a short collection of characters - but not for a word processing program. A trademark can certainly be a generic word or phrase, just not the generic word or phrase for the product being offered. If I created a word processor and named it "Word Processor", then that would be a generic term.

    2. Re:So what if it is a generic term by Rudolf · · Score: 1
      If so, then note that Microsoft uses (tm) and not (r) - because it hasn't been successfully registered.

      Please stop spreading this myth. Microsoft has several registered trademarks for "Windows". You can search for yourself at http://www.uspto.gov/

      This one might interest you:

      Word Mark WINDOWS

      computer programs and manuals sold as a unit; namely, graphical operating environment programs for microcomputers. FIRST USE: 19831018. FIRST USE IN COMMERCE: 19831018

      Registration Number 1872264

      Owner (REGISTRANT) Microsoft Corporation CORPORATION DELAWARE One Microsoft Way Redmond WASHINGTON 980526399
    3. Re:So what if it is a generic term by ricegf · · Score: 1

      And they use the (r) here plain as day. Mea culpa - it would have been so easy to look first. *blush*

      The rest of my statements were accurate, however, despite my lapse of memory. Microsoft's initial request for a trademark on Windows was rejected as generic, but they succeeded in overturning that ruling on appeal. Lindows sought to have the trademark invalidated as generic as part of their countersuit. Microsoft launched a blitz of lawsuits worldwide to (I believe) drive Lindows into financial distress and force a settlement rather than litigate on the merits of their case. And Microsoft did pay Lindows $20 million to end the lawsuit and change their name (to Linspire) - which looks less like a victory to me than a payoff. You can read the details here and here.

      Perhaps I was wishfully thinking. I believe the original rejection of the trademark was proper. That and $5 will get you a coffee at Starbucks, of course.

  10. What I wonder is... by Xenographic · · Score: 1

    Why don't they use SM, given that it's a servicemark, not a trademark?
    I'd think that "cyber" lawyers ought to know the difference... right?

  11. Ruling the world! by English+French+Man · · Score: 0, Flamebait

    I will trademark the world 'law'! And then, I will sue every tribunal over the world! Yes!

    --
    If I'm wrong, please correct me ; learning is better than being right.
  12. If PJ was smart enough to know whats goin on by Anonymous Coward · · Score: 0

    She'd be a lawyer and not a paralegal.

  13. Re:WHO'S THE FUCKING ASSHAT?!? by Anonymous Coward · · Score: 0

    It doesn't cripple "everyone," you GIGANTIC PUSSY. Any logged-in user can set preferences to show the old view.

    It just stops SHIT FACES like you from ASS FUCKING the site to death with your wildly inappropriate comments by keeping the delicate eyeballs of casual browsers away from your TWATRAGEOUSNESS.