4 ms·

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 "entrepr

by Joakal 15y ago

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?

superppl 15y ago
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.
- bullseye 15y ago
  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.
  - gaius 15y ago
    Legend has it that DEC and Hoover periodically sued each other over the trademark for VAX.
- Joakal 15y ago
  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._Lindows https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_vs....
  - 6ren 15y ago
    You're right in general, but that example doesn't support it: MS didn't win, but bought the trademark. For $20 million.
    - Joakal 15y ago
      Here's a list of other trademark litigation cases: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_litigation#Trademarks https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_lit...
- code_duck 15y ago
  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.
  - A1kmm 15y ago
    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.
    - gavinballard 15y ago
      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).
      - GFischer 15y ago
        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 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.
derefr 15y ago
You mean, like "realtor"? http://en.wikipedia.org/wiki/National_Association_of_Realtors#Trademark_status 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.
- runaway 15y ago
  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.
  - rvkennedy 15y ago
    I knew there was a reason I hated that word - it always sounded phony.
    - ssharp 15y ago
      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.
  - GFischer 15y ago
    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 http://stosselintheclassroom.org/video_activityMar08.html (Important for startups: http://blog.startupipservices.com/archives/top-startup-trademark-mistake-%E2%80%93-failure-to-research-and-protect-the-business-name/ 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 http://news.ycombinator.com/item?id=2578717

by Joakal 15y ago

superppl 15y ago

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.

bullseye 15y ago
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.
- gaius 15y ago
  Legend has it that DEC and Hoover periodically sued each other over the trademark for VAX.
Joakal 15y ago
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._Lindows https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_vs....
- 6ren 15y ago
  You're right in general, but that example doesn't support it: MS didn't win, but bought the trademark. For $20 million.
  - Joakal 15y ago
    Here's a list of other trademark litigation cases: https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_litigation#Trademarks https://secure.wikimedia.org/wikipedia/en/wiki/Microsoft_lit...
code_duck 15y ago
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.
- A1kmm 15y ago
  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.
  - gavinballard 15y ago
    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).
    - GFischer 15y ago
      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 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.

derefr 15y ago

You mean, like "realtor"? http://en.wikipedia.org/wiki/National_Association_of_Realtors#Trademark_status 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.

runaway 15y ago
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.
- rvkennedy 15y ago
  I knew there was a reason I hated that word - it always sounded phony.
  - ssharp 15y ago
    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.
- GFischer 15y ago
  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 http://stosselintheclassroom.org/video_activityMar08.html (Important for startups: http://blog.startupipservices.com/archives/top-startup-trademark-mistake-%E2%80%93-failure-to-research-and-protect-the-business-name/ 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 http://news.ycombinator.com/item?id=2578717