Judge to Rule on Validity of Windows Trademark

Linux distribution maker Lindows.com announced yesterday that it has submitted its final legal filing that challenges the validity of Microsoft's trademark on the term Windows. Lindows.com filed the lawsuit after Microsoft sued the open-source company for its use of the term Lindows, which Microsoft says is too close to Windows and could confuse consumers. A US District Court in Seattle will now determine whether Windows is a valid trademark; Judge John C. Coughenour will issue a ruling or set a date for further hearings within 30 days.

Microsoft filed its initial trademark-infringement suit in December 2001, and Judge Coughenour has since denied Microsoft's two requests for an injunction that sought to bar Lindows.com from using the Lindows name. During injunction hearings earlier this year, the judge questioned the eligibility of Microsoft's trademark of the term Windows, which was a generic computing term for years before Microsoft received the trademark. Indeed, as Lindows.com discovered during its legal fight, the United States Patent and Trademark Office twice denied Microsoft trademark status for the term and awarded a trademark to the company only after years of efforts under somewhat suspicious circumstances.

"We believe the indisputable historical record clearly demonstrates that the term 'windows' was generic when Microsoft first began using it in the early 1980s," said Lindows.com CEO Michael Robertson, who first rose to fame when he launched MP3.com. "We're hopeful, now that all the papers are in front of the judge, that he will hand down a ruling which will allow us to get past these courtroom battles and allow us to focus exclusively on our goal of bringing choice to computer buyers."

Although Lindows.com's business viability might be questionable (its Linux distribution has suffered from poor reviews and early, unsubstantiated claims that it would run Windows applications), the company has effectively turned Microsoft's trademark-infringement claim into an all-out brawl that threatens the software giant's core product. Judge Coughenour noted in March that "Lindows.com has met its burden of proof in rebutting the validity of the Windows trademark and the 'presumption' drops out of the case." This means that the burden of proof moves to Microsoft, which has had trouble meeting legal requirements for a trademark. "Microsoft supplies minimal affirmative evidence to support its claim that Windows is a descriptive mark that has acquired secondary meaning and is thus protectable under the Lanham Act," Judge Coughenour said.

Lindows.com also has legal precedent in its favor. A 1979 court ruling established the rule "once generic, always generic," which means that companies can't trademark generic terms such as windows even after years or decades of use as product names. Companies have repeatedly tested this rule in court, but the courts have always upheld it. In fact, in the 1979 case cited previously, a federal court ruled that "a 'generic' word cannot be validly registered as a trademark even if there is proof of secondary meaning. The reason is plain enough. To allow trademark protection for generic terms ... would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are."

What will happen if Microsoft loses its trademark is unclear. The company has probably explored various options, including renaming the product line, although such an action would be expensive and confusing for consumers. The company probably started to use naming modifiers (e.g., XP, 2000, NT) for its Windows products at least partially to protect the products from infringement because a name such as Windows XP is far more specific than Windows \[version\] 5.1. Thus, Microsoft might decide to keep the name Windows and continue using unique modifiers for each version. But for all the companies, large and small, that have suffered Microsoft's legal wrath for using the term Windows, a ruling against the company could have interesting repercussions.

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