On Feb 15, 2009, at 7:35 PM, richardsan wrote:

>
> don't be too hasty, gentlemen:
> http://news.cnet.com/8301-13579_3-10164264-37.html?tag=newsFeaturedBlogArea.0

While the subject matter of the applications is totally juvenile, the  
actual legal argument here is straight-up trademark case law,  
particularly over trademarks using common words.

The use of common-word trademarks is generally held to be very narrow,  
in that you can only bring a complaint when the infringer is selling  
something that competes directly with your usage of the trademarked  
words.

Microsoft owns a trademark on the word Windows, but this doesn't mean  
Pella has to change the name of what they're selling. It DOES mean  
that I can't sell a program called "Windows Pull My Finger" without  
either getting permission or getting sued by Microsoft. (Air-O-Matic  
could also sue me, but with less chance of success, because I'm  
selling a computer program for a completely different platform.)

The essence of trademark fights is "Can a reasonable layperson be  
confused over whose product they're obtaining or using?"

This was why Apple had to change the name of their Zeroconf technology  
from 'Rendezvous' to 'Bonjour'. The trademark 'Rendezvous' was already  
being used by a company selling a network self-configuration  
technology, even though it wasn't based on the Zeroconf standard.

This can be blurry: Apple was allowed to call Mac OS 9, 'OS 9' despite  
there already being an operating system called OS9, that had been on  
the market a long time. In that case the judge ruled that OS9, an  
obscure OS mainly used in industrial control equipment was  
sufficiently different from Apple's OS 9 that a reasonable person  
would not get confused. In this case Apple also had the advantage of a  
long precedent of calling their system Mac OS N, when N was a number,  
and 9 WAS the next number in a row.

In this case both plaintiff and defendant are fart noise apps for the  
iPhone, which CERTAINLY meets the narrowness criteria. What the makers  
of iFart mobile are asking, basically that a competitors pre-existing  
trademark be voided because simply it's a common phrase associated  
with making fart noises. (Which was the REASON it was called 'Pull my  
finger' in the first place!)

But existing case law says that someone CAN trademark a common word or  
phrase, so long as the trademark is restricted to a sufficiently  
narrow field. Microsoft can trademark 'Windows' in the realm of  
computer software, they cannot trademark Windows generically.

The only sliver of hope that iFart Mobile has is that you cannot  
usually trademark a common word or phrase as it is used commonly.

Pella, while insulated from being sued by Microsoft over the use of  
'Windows' in their name by virtue of the word being used in completely  
different context, is ALSO insulated from being sued by Andersen  
Windows for the use of the word 'Windows' because that's what they  
both MAKE.

I cannot call my window company 'Anderson Windows' unless I have a  
very clear standing to the name Anderson, and possibly not even then.

It all comes down to the 'reasonable person being confused' test.

The only time you can trademark something generically is when it is  
truly your own, self-created trade mark: Xerox, Kleenex, Microsoft. I  
cannot sell Microsoft tissues, despite the enormous difference in  
markets,even if my tissues are very small and very soft.

If the judge grants this, that ruling will overturn a significant  
amount of precedent.

All over a fart joke. But this is the kind of stuff that moves the  
law. Sometimes it's Brown V Topeka, sometimes it's Falwell V Flynt.

-- 
Bruce Johnson
University of Arizona
College of Pharmacy
Information Technology Group

Institutions do not have opinions, merely customs



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