JBL
ATM network company corners 'Internet'
Published: March 20, 1997
BY ELIZABETH WASSERMAN Mercury News Staff Writer
There's another new problem with the Internet.
Somebody owns the name.
Internet Inc., of Reston, Va., is in the midst of a two-year battle to
protect
its corporate trademark. The company, founded in 1984, has little if
anything to
do with personal computers, e-mail or surfing for information. It runs a
network
of automated teller machines and, in January, merged with another ATM
network to
become Honor Technologies Inc.
But seven years ago, Internet Inc. registered ``Internet'' as a trademark
with
the federal government, not knowing that the global computer network
popularly
known by the same moniker would become so widely used. The company,
however,
still wants the exclusive right to use and license the Internet name.
``It's now a valuable mark,'' said Edward Kondracki, an attorney with
Kerkam,
Stowell, Kondracki & Clarke in Falls Church, Va., which represents
Internet Inc.
``Events have happened since then that increased the value.''
One of the results of the fight by Internet Inc., whose right to the mark
has
been challenged by a society made up of many of the technological
founders of the
Internet, is that the U.S. Patent and Trademark Office has delayed the
petitions
of hundreds of companies seeking to use the word ``Internet'' to
trademark their
goods or services.
Companies requesting trademarks in the burgeoning Internet field are
being told
by Washington they will face delays unless they use a more generic term,
such as
``global communications network.''
``In trademark-office parlance, `Internet' is like one of George Carlin's
seven
dirty words: It cannot be spoken,'' said Sally Abel, an attorney with
Fenwick &
West in Palo Alto, who estimates that 90 percent of her clients have been
affected by the trademark case.
A trademark is a distinctive phrase, word, logo, or symbol that
distinguishes one
manufacturer's product from another's -- for example, Ford cars,
McDonald's
hamburgers, IBM computers.
Trademarks can be awarded in scores of different categories. For example,
Apple
Computer is a trademark and it co-exists with Apple Corp., the Beatles'
trademark
record label. But the trademark allows Apple Computer to prevent another
computer-related company from using the name.
Sometimes, however, trademarks can be lost when a term becomes considered
``generic'' -- for example, Bayer Corp. lost its trademark for the name
aspirin.
Internet Inc. was awarded trademark protections in categories that include
communications services, providing electronic data transmission services,
and
electronic banking and retail marketing.
Some of Abel's clients in techno-savvy Silicon Valley have been confused
when
asked to change business or product names. ``They say, `What do you mean
global
communications network?' '' Abel said. ` ``Aren't we talking about the
Internet?'
''
No one is sure how much longer the growing number of Internet cases will
be
delayed. The trademark office's administrative trial and appeal board has
been
reviewing the case of the Internet Society and Corporation for National
Research
Initiatives vs. Internet Inc. since it was filed in October 1994. Federal
officials say the importance of the case -- nearly 1,000 petitions
requesting
marks involving the term Internet have been received to date -- has
contributed
to the delay.
``It's a monumental case,'' said Lisa-Joy Zgorski, press secretary for
the U.S.
Patent and Trademark Office. ``It will have tremendous implications in
how we
handle relevant trademarks.''
The Internet Society, a non-governmental organization for global
cooperation for
the Internet, had tried to register its own trademark of the name
starting in
1989. But those requests were denied, citing the Internet Inc. trademark.
Now,
the society is arguing that the term ``Internet'' is generic and so
widely used
-- like aspirin, escalator and cellophane -- that it shouldn't be owned by
anyone.
``It's like car or telephone or television,'' said Patrice Lyons, the
Washington,
D.C.-based attorney for the Internet Society. ``There are certain terms
like that
that are generally accepted to be descriptive of a particular thing. They
shouldn't be subject to trademark restrictions. Internet is merely a
descriptive
term for the well-known network of networks.''
Lyons said the categories for which Internet Inc. was awarded trademark
status
are too broad because they cover a big share of Internet-related
businesses and
their products.
In technological circles, no company wants a product to be considered
generic. In
the early 1990s, Intel Corp. was stripped of trademark protections for
its 386
microprocessor chip, after competitor Advanced Micro Devices Inc. proved
the term
was generic. When Intel tried to protect other chips in the series -- the
486,
586, 686, etc. -- AMD and Compaq Computer Corp. opposed the petitions.
Intel
switched to the product name Pentium but has since been embroiled in a
similar
dispute over the rights to the MMX name, which competitors say is generic
for
``multimedia extensions.''
The U.S. Patent and Trademark Office has issued 1 million trademarks to
date.
Last year, the office examined 200,000 applications for trademarks,
Zgorski said,
among those nearly 1,000 that requested trademarks using the term
``Internet.''
The Internet is having a notable affect on trademark law in other ways,
too,
because it cuts across national boundaries.
``It's an international Yellow Pages,'' said Stephen Elias, author of
``Patent,
Copyright & Trademark,'' published by Berkeley's Nolo Press. ``It used to
be that
your decision about what marks to use, where to register them, where to
search
for existing marks, could all be done on a local basis. If you were
registering
Pete's Barber Shop or Barking Dog Coffee Roasters, there were likely no
other
businesses by that name in your town.''
These days, a company in San Jose with a presence on the Internet might
have to
check trademark registrations in Italy or Australia or Japan before
deciding upon
a company or product name, Elias said.
The question remains whether ``Internet'' is too widely used to be
protected in a
trademark.
``We advise clients that putting `Internet' in your name is like putting
the word
`The' in your name,'' said Palo Alto attorney Mark Radcliffe, of Gray
Cary Ware &
Freidenrich. ``Internet is not protected for something related to the
Internet,
just as using PC is not protected in the personal-computer market.''
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