Good article in the NY Times (free online subscription version here) on the trademark dispute between Microsoft and Lindows, in which Lindows, in response to MS’ allegation that LINDOWS infringes WINDOWS, apparently is seeking to get a holding that WINDOWS does not function as a legally protectable trademark.  Note the ‘legally protectable’ bit.  It clearly does function as a trademark.  If I say “Windows Sucks”, you know what I mean, and that’s proof of secondary meaning.  In fact, given that apparently 400 million people use the product, I would venture that we have something of a paradox.  WINDOWS might be one of the strongest trademarks in the history of the world, and, according to Lindows, may not be legally protectable (at least in the US).

The wrinkle is, in part, in Sec. 15 of the Lanham Act (15 USC 1065(4)) which states that “no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof . . ”  Note the present tense of the clause.

Lindows may argue that it merely has to show that in the 80’s, when MS choose the mark, WINDOWS was the generic term for software which breaks a screen display into separate rectangular displays.  As in: “Please hand me that windows software.”  The NY Times article has a good introduction to the state of play in the 80’s on this point, which indicates that at least the term WINDOWING was regularly used as a descriptive (not generic) term (while relevant, that does not establish that WINDOWS was the generic term at the time).  More determinative would be evidence that people referred to non-MS windowing software as “windows software” or had “windows functionality.” MS argues that the real generic term for the product GUI or graphics user interface.  I would imagine that MS also argues that the present tense of the section suggests that the proper time frame should be when the third-party use begins (namely when LINDOWS was adopted).

The article does not mention that MS still must disclaim the term WINDOWS when filing for marks such as WINDOWS XP, which means that MS has to concede the point vis a vis th US PTO (which hurts but doesn’t end its argument in civil court).

Finally, no doubt because the NY Times is yet to discover my international metasearch, the article also doesn’t point out that MS might well own registered trademarks of the WINDOWS name without disclaimer, in other nations., and possible would be able to stop LINDOWS there.

The article does mention that the founder of LINDOWS was also the founder of MP3.COM, and therefore had telephone numbers for defendants’ lawyers in his PDA.

p.s.  There is a lot of material on this case on the web.  Google “Lindows motion papers” for a start and you will find this from Lindows itself.

p.p.s. In the article, Lindows’ attorney plays the populist card making the statement that no one should be able to establish a monopoly in a word.   While not precisely the same, grabbing MP3.COM, and LINDOWS (the best abbreviation for a Linux Windowing program), is not precisely altruistic behavior either.