Hacker News Reader

Comment by Joakal | Hacker News Reader

Paragraph that sums the article: An attorney with the corporate law firm Latham & Watkins informed Castro that EMI owns the U.S. trademark for the word "entrepreneur." With 2,000 lawyers in 31 offices around the world, Latham polices EMI's intellectual property aggressively. The firm even instructed Castro to surrender his domain name to EMI. "If you fail to abide by these demands," the letter said, "Entrepreneur Media will have no choice but to take appropriate action to prevent continued use of an infringing mark and domain name."

Looks like an app store issue! How can a business trademark a single English word that effectively describes the industry?

View on HN

You mean, like "realtor"? http://en.wikipedia.org/wiki/National_Association_of_Realtor...

> Realtor is a frequently-used word in many countries to describe any person or company involved in the real estate trade, regardless of their NAR status or American residence. However, in the United States, the National Association of Realtors in 1949 and 1950 obtained registrations for the words "Realtor" and "Realtors" as collective trade marks.

> In 2003, Jacob Joseph Zimmerman, a real estate agent who was not a member of NAR, petitioned the U.S. Patent and Trademark Office to cancel the trademarks, on the ground that "Realtor" and "Realtors" were generic terms rather than a trademark. On March 31, 2004, the USPTO's Trademark Trial and Appeal Board denied the petition.

But the term realtor was invented by the association to describe its members, specifically to differentiate them from other real estate agents. It's more like a "genericized brand name", not a previously existing English word.

To make things worse, they have to protect their trademark aggressively, else they do become generic:

"The courts read any failure to protect your trademark as good reason for the courts to not help you protect it later when you find the infringement significant. As the trademark attorney in the clip noted, Elevator, Thermos, Aspirin, and Trampoline all lost their rights to their trademarks, because they didn't "police" their trademarks."

From: http://stosselintheclassroom.org/video_activityMar08.html

(Important for startups:

http://blog.startupipservices.com/archives/top-startup-trade...

I'm sure you knew already, but it doesn't hurt to reinforce the importance of trademarks.)

Edit: dotBen made a similar point further down the thread

http://news.ycombinator.com/item?id=2578717

To make things worse, they have to protect their trademark aggressively, else they do become generic

So what is the downside in this scenario? How is Bayer hurt by not owning an Aspirin trademark any longer?

Quick: Who made Kleenex?

The answer is Kleenex. Now try to tell someone in a general conversation that you when you're talking about Kleenex, you meant 1) the actual company Kleenex, not the 2) product nor the 3) other generic tissue paper products. Because now you have to explain to consumers why your Kleenex is better than your competitors Kleenex, when before you could just say 'Kleenex, the brand that works' or 'Kleenex, the brand you trust' or just plain 'Kleenex'. Even if it's just a name, if you reduce the number of ways for you to differentiate your product from others, it just makes it harder to do so.

I understand the confusion (here in the South Eastern US they use 'coke' instead of 'soda' as the generic term) but are there other ways for businesses to react? It seems kind of silly to fight against a brand name being subsumed into colloquial speech by frantically suing the pants off of everyone. And when the term finally becomes more widely known as a generic term instead of a brand, then what do you do? It doesn't make sense for "realator" or "entreprenur" to be trademarked. So what should the organizations that own these trademarks do? Hang on to them in desparation? How does that benefit anybody?

See? That's how well these companies did with their marketing. It was such a successful campaign that you, who I'll presume is an intelligent human being, see it as silly legal issue. Frankly speaking? No. There really isn't another way for businesses to handle it. You're talking about legal issues, and the way to resolve legal issues is through legal means.

It seems silly now, but to many of these companies, it's the way for them to be unique, to stand out among the crowd. Because they came up with the word 'realtor' and 'entreprenur' to describe themselves, not to describe others. And, rightly or wrongly in this case, the government said that the words they use to describe themselves was so unique that it was worth it to legally make it theirs.

(And all the past successes of these names being turned into generic terms (Kleenex, Xerox, Aspirin) is the other reason why these companies are fighting tooth and nail to make sure it doesn't happen to them. The government has basically stated that it's a use it or lose it situation. And they are determined not to lose it. Whether or not that's a good thing....)

I knew there was a reason I hated that word - it always sounded phony.

I generally refer to them as agents or brokers. Those terms are more specific because, at least in the U.S., there is a legal distinction between the two.

I think the only times I've ever said "realtor" has been when it was informal. Having researched the NAR, MLS, etc. before selling my house, it seemed fairly obvious that realtor was a trade name and something I just assumed was trademarked.

Trademark law does not seem to care how inherently generic a term is, or about the history of the term. All that matters is whether the term currently serves as a distinctive trademark and whether the alleged infringing use is as a competing trademark.

This is why it's ok to use the word "entrepreneur" in general, but not as the name of a magazine or "communication product".

Great startup idea... trademark the word "Hacker" and you instantly have a new trademark troll business in your pocket.

I'm curious if it would stand up in court.

Microsoft owns the trademark for "Windows", but walk into a hardware store and you'll see dozens of companies that freely use windows in their name. I've never heard of Microsoft going after them.

Trademarks are granted for certain products and services. In Microsoft's case, it's computer services or something. If you try to offer an operating system with a name that has Windows in it, then you would be sued.

Here's an example: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_vs....

You're right in general, but that example doesn't support it: MS didn't win, but bought the trademark. For $20 million.

Here's a list of other trademark litigation cases: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_lit...

No one is likely to confuse panes of glass with an operating system. If those same hardware companies started selling branded software, or probably even computer hardware for that matter, it would likely be a different story.

Legend has it that DEC and Hoover periodically sued each other over the trademark for VAX.

That's because trademarks only apply to a particular line of business - specific 'goods and services'. Along the same lines, if I wanted to open a business called Dell in the line of plumbing, that would be fine as long as I stayed away from the computing business under that name. Sometimes, there's a conflict when the definitions may overlap - Apple Corps (Records) vs. Apple Computer, for instance.

In the US, there are two ways to infringe trademarks: 1) Using the trademark in a way likely to cause confusion - generally has to be in the same line of business. 2) Trademark dilution - using a famous, distinctive brand and making it a generic term.

Entrepreneur, Apple and Windows aren't distinctive in their own rights (the logos might be, however), but some names certainly are.

Some seminal examples of this (in Australia at least) include "McDonald's" (pretty much impossible to brand any good or service, no matter its class, as such) and "Nike" (the shoe manufacturer prevented the manufacture of "Nike" perfume).

Trademarks are usually registered in one or several international classes (there are 45 of them), but there's a cost per class, so most companies don't try to cover the whole spectrum:

http://www.uspto.gov/trademarks/notices/international.jsp

So, you can have a "Widgets" trademark for class 9 (Electrical and scientific apparatus), and another company can own the "Widgets" trademark for class 29 (Toys and sporting goods).

Some companies do register their trademark across the whole spectrum, like Coca-Cola, and probably Nike too.

Note that pharmaceuticals are a whole different story, as there are so many of them that you can have similar-sounding ones as long as they do something very different.

Reply on news.ycombinator.com