November 2, 2008 by Erin Miller
Steve Lohr’s article “A New Battle is Beginning in Branding for the Web” highlights the trade-mark issues that are emerging in response to the ever expanding realm of internet technology. As David Vaver explains, trade-marks exist “to identify the trade source of products and services to potential customers.” However, as Lohr points out, those products and services have become at best “vaguely defined.” Just as what can and should be trade-markable becomes more complex, companies are becoming increasingly aggressive in their attempts to obtain trade-marks over these new technologies.
As in any other area of intellectual property law, it is not simply corporations such as Microsoft who have a stake in whether or not they obtain their desired trade-mark. Consumers and the public as a whole also have a great deal of interest in whether or not companies ought to be able to lay claim to certain technological terminology. Once something has become part of the public lexicon, should a company be able to retroactively reclaim the rights to a particular phrase?
It is in the very speed and ease of internet communications that foster such difficulties. Dell, as described by Lohr, may have filed its trade-mark application before “cloud computing,” the phrase over which it sought to trade-mark, was widely used. However, by the time the trade-mark office was able to assess whether or not this term should be a trade-mark, a full eighteen months had passed and the term had become commonly used in the industry. This lag in the ability of the office to address this trade-mark likely led directly to its eventual denial. Eighteen months is near eternity in an industry whose very core relies on quick turnover and speedy innovation. Instead of receiving recognition and the accompanying rights associated with the ownership of a trade-mark, companies are forced to integrate aggressive, and what could eventually emerge as counterproductive, tactics. Instead of releasing new technology, companies may keep such innovations quiet in order to ensure that at the end of the extended assessment of the trade-mark office all will not be for naught.
Lohr points out that the trade-mark office’s wooden cabinets and file folders of yesteryear have been cast aside in favour of specialized databases dealing with trade-marks and other internet resources. However, it does seem as though an understanding of the necessity of quick action is lacking on the part of at least the American trade-mark office described here. Eighteen months is an unacceptable amount of time when dealing with trade-marks involving internet technology. Perhaps there needs to be recognition that “cloud computing” simply does not belong next to the puffy visage of the Pillsbury Doughboy in the trade-mark office’s files. Instead, there could be a separate, expedited system for those trade-mark applications dealing with computer and internet technologies. At the very least, trade-mark offices worldwide ought to take a hard look at their trade-mark practices in light of this emerging trend.