Trademark, Copyright & IP

Timing is Everything: "Windows" Then or "Windows" Now

June 2004

In the ongoing litigation between Microsoft and Lindows.com over the Windows trademark, Microsoft must withstand a challenge to the validity of its trademark before the question of infringement by Lindows.com will come into play. The validity determination will turn on the factual question of whether “windows” is a generic term for graphical operating environments. On May 19, 2004, the U. S. Court of Appeals for the Ninth Circuit declined to hear an interlocutory appeal from the trial court’s ruling that the relevant time frame for determining whether or not the term is generic is the mid-1980s when Microsoft launched its first version of the Windows product. The Ninth Circuit’s dismissal of the appeal means that Microsoft will not be able to argue at trial that consumers today recognize “Windows” to be a valid brand of operating system proprietary to Microsoft.

The litigation over the Windows trademark highlights a distinction between valid trademarks that become generic over time — “escalator” for moving stairs is a frequently-cited example — and words or phrases that were generic from the moment of their adoption by the purported trademark owner — for example, “raisin bran” for breakfast cereal made from raisins and bran. Most trademark owners forced to defend the validity of their marks would rather argue that they should not be the victims of their own success in the marketplace, that they should not be penalized because their trademarked product has been so resoundingly popular with consumers that consumers have come to view the mark, not as a brand name attached to an object, but as a noun signifying the object itself. The Xerox Corporation understands this dilemma well. The company has waged a long-standing public education effort to convince consumers that the word “Xerox” does not denote each and every photocopy ever made, rather it describes only those photocopies made with a Xerox photocopy machine. In contrast, a company forced to defend a term alleged to be generic from its inception is cast in the role of an aspiring monopolist, much like Miller Brewing Co. in its unsuccessful bid to appropriate the generic phrase “lite beer” as a brand of low-calorie beer. Had its attempt been successful, Miller Brewing would have prevented competitors from describing their products using those words, possibly impairing their ability to penetrate the low-calorie beer niche.

Microsoft has worn the label of a monopolist for some time and, so, undoubtedly is less concerned with public perception and more concerned with how it will counter evidence that has already come forward suggesting that even Microsoft recognized the word “windows” as a generic term for a category of products in the mid-1980s. Included in that evidence are Microsoft’s own advertisements for the early 1980s which describe its Windows product as a “window manager” or “windowing environment.” The company’s own computer-terms dictionary refers to the product as a “windowing environment” and “windowing software.” Microsoft’s position throughout the case has been that the meaning of the word “windows” in the mid-1980s is irrelevant because, whether or not generic at the time of its adoption, “Windows” in its current usage is recognized by the public to be a brand of operating system owned by Microsoft. The appeal just dismissed has laid that argument to rest for purposes of trial because the trial judge made clear in the order recently under appeal that, “[i]f the mark is found to be generic, ‘it cannot be the subject of trademark protection under any circumstances.’”

This last aspect of the court’s order shuts the door on Microsoft’s attempt to rely on a line of case law which acknowledges that a mark, once declared to be generic, may be resurrected from the public domain and be reclaimed by the former trademark owner. The difficulty with reliance on these cases is that they relate to the victim-of-your-own-success type of genericness. The cases involve the trademarks “Singer” for sewing machines and “Goodyear” for rubber, both personal names of the inventors of the items to which their names were applied. At the beginning of the last century, both marks were declared by the U. S. Supreme Court to have entered the public domain because the public at that time utilized the word “singer” to mean any type of sewing machine and the word “goodyear” in place of the word “rubber.” Both mark owners continued to extensively advertise their respective former marks, however, and midway through the last century, lower courts conceded that the consuming public had been reeducated to understand them to relate to only one brand of sewing machine and only one brand of rubber. No precedent exists to apply this reasoning to the would-be monopolist who pulls a generic term out of the lexicon and attempts to claim it as a proprietary trademark, and the Ninth Circuit has held in at least one prior case that such a claim would be invalid.

At trial, Microsoft will have an uphill battle in its defense of the validity of the Windows trademark despite the fact that it owns numerous federal registrations that include the word “windows.” Existence of a federal registration merely creates an evidentiary presumption of validity that Lindows.com should be able to overcome easily in light of evidence already publicized regarding Microsoft’s own use of the word as a generic term in the mid-1980s. If the trial court determines that Microsoft’s mark was generic at the time the Windows product was launched, not only Lindows.com but any current competitor of Microsoft will be free to use the word “windows” in company or product names and descriptions.

* Susan Richey, Of Counsel, is admitted in California.

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