This illustration for Tim O’Reilly’s article “What Is Web 2.0?” suggests the challenge that CMP created for itself in maintaining WEB 2.0 as a trademark (as opposed to a meme). Forget for the moment whether lawyers are necessary, or whether it was bad PR for CMP to send a demand letter, or if O’Reilly, as a champion of open-source ideas, should be held to different standards, or whether somebody was rude to somebody in an email.
There is a branding and trademark protection point here.
When the ITU was filed for WEB 2.0 in 2003, WEB 2.0 was, imho, an inherently registrable mark. I base this on one fact and one assumption. The fact is that the PTO (correctly) didn’t give the mark a descriptiveness objection and the assumption is that the term was not widely used in 2003 (although some dispute this). So CMP had the potential for a strong exclusive trademark.
But O’Reilly took another (understandable) tact. It promulgated the term to have universal meaning other than as an indicator of a CMP/O’Reilly product. When O’Reilly, for example, talks about WEB 2.0 principles and WEB 2.0 applications and WEB 2.0 companies, he breaks the link of meaning between the trademark and his company’s services.
So, despite what Mr. O’Reilly states in paragraph of his post today, this may indeed be that rare trademark creature, genericide, but self-incurred genericide.
This can be a totally acceptable branding strategy. But the trademark lawyer has to advise the client that adopts this ‘brand as buzzword’ strategy that its likely result is razor-thin trademark protection, and backlash when those thin rights are asserted.