Microsoft has another 'paneful' experience in WINDOWS dispute

In yet another development in the ongoing dispute over the WINDOWS and LINDOWS marks, the US Court of Appeal for the Ninth Circuit has dismissed Microsoft's expedited appeal to decide what point in time should be considered when determining whether a mark is generic.

Following an infringement action filed by Microsoft, which claimed that Lindows had infringed its WINDOWS mark, Lindows counterclaimed that the term 'windows' is generic. It contended that the relevant public understood that the term referred to a type of graphical user interface or operating system feature at the time Microsoft adopted it as its trademark. The prevailing rule under US trademark law is "once generic, always generic", meaning that no amount of advertising or promotion can convert a generic term into a distinctive mark. Accordingly, the US District Court for the Western District of Washington held that a jury was to determine whether the mark WINDOWS was generic at the time Microsoft adopted it as its trademark (see WINDOWS Case proceeds to trial). At Microsoft's request, it later certified an expedited appeal to the Ninth Circuit to rule on whether this jury instruction was proper as a matter of law.

In the meantime, Microsoft had obtained preliminary injunctive relief in several foreign countries, including the Netherlands (see Microsoft cracks down on Lindows in Benelux). If the judgment were to be enforced against Lindows in Benelux, it would have the plenary effect of shutting down its website altogether. Microsoft also sought the imposition of a fine of €100,000 per day should Lindows continue the use of its mark or similar mark (eg, LIN---S.COM) in Benelux.

In order to ward off a war of attrition involving multiple suits in multiple jurisdictions, Lindows, now called Linspire, also asked the district court in Seattle to enjoin any further proceedings by Microsoft pending the outcome of the main case before the same court. That order was denied (see Lindows loses battle, but WINDOWS war not over).

The Ninth Circuit's dismissal of the expedited appeal is a blow to Microsoft, which had argued at trial court level - and was prepared to argue before the Ninth Circuit - that the trial should concentrate on what consumers understand the word 'windows' to mean today, not what it meant in 1985 when Microsoft decided to adopt the word as its mark. Linspire is now looking forward to getting the trial back on track and is reportedly prepared to present a substantial amount of documentary evidence that it claims clearly shows that 'windows' was a commonly used, generic term before Microsoft attempted to commandeer the word as its mark.

The case now goes back to the district court in Seattle and is expected to go to trial in the second half of this year.

Robert Lyon, Holland & Knight LLP, Los Angeles

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