WINDOWS Case proceeds to trial

The US District Court for the Western District of Washington has denied a motion for summary judgment filed by to dismiss Microsoft's trademark infringement action on the grounds that Microsoft's mark WINDOWS is generic. The case will proceed to trial.

In December 2001 Microsoft filed a trademark infringement action against Lindows, seeking a preliminary injunction against the use of 'Lindows' as either a company or product name. The court denied the motion. It found that before Microsoft first announced its Windows product in 1983, the public understood the terms 'windows' or 'windowing' to refer to a type of graphical user interface or operating system feature. While the court did not conclude that Microsoft's WINDOWS mark is generic, it held that the presumption of validity attached to Microsoft's federal registration for WINDOWS had been rebutted.

In balancing the hardship between the parties with respect to the relief requested, the court found that Lindows had made a risky decision in choosing a mark so close to Microsoft's well-known WINDOWS mark, but that Microsoft had made an equally risky decision in 1983 when it named its product after a term commonly used in the information technology business. The court held that these decisions cancelled each other out and, therefore, the balance of hardship did not tip in Microsoft's favour on the preliminary injunction request. Lindows then moved for summary judgment, seeking to dismiss Microsoft's action on the grounds that the WINDOWS mark is generic.

In spite of the substantive evidence produced by Lindows, the court held that the issue of whether the term 'windows' is generic for a class of software is for a jury to decide. Therefore, it dismissed Lindows's motion.

The trial, first set for April 7, has been postponed until December 1.

Virginia R Richard, Winston & Strawn, New York

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