Setback for Microsoft leaves Windows Trademark in Peril

Was the word “Windows” generic for computer operating systems in 1985? That is the question the jury in Microsoft Corporation v. Lindows.com, Inc., 01-2115, must answer, according to the Chief Judge for the U.S. District Court for the Western District of Washington. The case, which pits the corporate behemoth Microsoft Corporation against the newcomer Lindows.com, Inc, has been closely watched not only by those in the computer industry but by those interested generally in U.S. trademark law. Lindows.com offers a Linux-based computer operating system under the name “Lindows OS” as an alternative to Microsoft’s Windows operating system.

In 2001, Microsoft sued Lindows.com for allegedly infringing its Windows trademark. In response, attorneys for Lindows.com have moved for cancellation of the Microsoft trademark alleging that “Windows” is generic and is therefore incapable of receiving federal trademark protection. Microsoft has argued that in determining whether a mark is generic, the present day significance of the trademark should be used. Lindows.com, on the other hand, has asserted that the test for generic meaning should be applied at the time the mark was first used in interstate commerce or, in this case 1985, the year Microsoft Windows 1.0 was introduced to the world.

In an order dated February 10, 2004 (available for download here), the Court sided with Lindows.com and explained that its interpretation of Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014 (9th Cir, 1979), in combination with its findings thus far in the case, dictate that the jury should be instructed to consider whether the Microsoft mark was generic at the time Microsoft first began using the now-ubiquitous trademark.

The Seattle Court’s short, but remarkable, order states:

[T]he Court declares that it will instruct the jury to consider whether the Windows mark was generic during the period before Microsoft Windows 1.0 entered the marketplace in November 1985. Furthermore, the Court will not instruct the jury that even if Windows were generic prior to November 1985, the trademark would nonetheless be valid today so long as the primary significance of the term today is not generic.

This is clearly a severe setback for Microsoft, whose billions of dollars in advertising since 1985 have made Windows a household name and nearly synonymous with the Redmond, Washington-based corporation. Should a jury determine that “Windows” is a generic term, Microsoft’s federal trademark registration for Windows will be cancelled and Microsoft will be unable to sustain its trademark infringement suit against Lindows.com, or anyone else henceforth.

However, it is not the end of the line for Microsoft on this issue, as the Court certified the legal question for appeal to the Ninth Circuit. With one of the most valuable trademarks in the world hanging in the balance, Microsoft has no choice but to appeal the decision. In the broader context, this case may conclusively settle the question of what time frame should properly be considered by a finder of fact in determining whether a mark is generic. The trial date for the case has been postponed pending the outcome of the appeal.

To learn more about this decision and the impact it may have on your trademark rights, please contact one of our experienced trademark attorneys by clicking here.

Lott & Friedland, P.A.

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