Category Archives: Law: Trademark Law

If I were still teaching Trademark, I could make something of JewTube. It's not quite an exam question, but it's at least a good class discussion. Is it a trademark violation? The chance of confusion is low. YouTube has considerable fame, however, so actual likelihood of confusion may not be required. There's clearly some overlap in what the sites do: serve up little movies. And the parody defense may be inapplicable, because JewTube does not appear to be a parody — it seems to be serious, for all that there's not much content there, and what there is won't detain you long…

But maybe it's not commercial, so the site survives, so long as it never runs a banner ad.

Anyway, I don't teach Trademark any more, so I don't have to worry about any of it, except why the site is so lame.

Google™ fights to avoid genericide.

“Genericide” is when your trademark becomes a synonym for a thing or activity. Asprin was a trademark once. Xerox™ and Kleenex™ live on the edge of genericide and spend big bucks to prevent it.

If “to Google” something were to come to mean to search for it online regardless of which search engine one used, google or “googling” would have become generic, destroying the trademark — and meaning that competitors could use it too. At present it still clangs a little to say “I googled him on Yahoo” so I think the brand is not yet generic.

But they sure are right to be worried.

I’m don’t often make legal predictions, but I’m going to go out on this nice sturdy limb here and predict that Apple’s attempt to assert trademark rights in the word “podcast” will fail. There are multiple grounds why it should fail (the term is in no way dilutive of “iPod” for one), but if I were a judge I would be very receptive to the suggestion that the term is now generic and thus part of the public domain.

Podcasting is the method of distributing multimedia files, such as audio or video programs, over the Internet using syndication feeds, for playback on mobile devices and personal computers. The term gained wide popularity as a portmanteau of iPod and broadcasting, but was seen before that as an acronym for “portable on demand”.

The term podcast, like ‘radio’, can mean both the content and the method of delivery. The host or author of a podcast is often called a podcaster. Though podcasters’ web sites may also offer direct download or streaming of their content, a podcast is distinguished from other formats by its ability to be downloaded automatically using software capable of reading feeds like RSS or Atom.

Incidentally, a quick search at the USPTO finds 20 filings with the word ‘podcast’ in them…but only two for the word alone. One, dated Feb. 10, 2005, is for “online prerecorded radio or other recorded program over the Internet for purposes of allowing users to download, in electronic audio or video files, information regarding entertainment and educational to MP3s or other portable audio and video players.” The other, for “SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC” claims a first use in commerce of only Feb. 2006. Neither is from Apple.

In case you care, Ann Bartow explains the trademark law behind the decision in the Hooters case. I especially liked the post title, “Hooters” Loses Its Appeal.

MARTY SCHWIMMER is not a bicycle or a water-exercise product for men. I am a law professor and I should know.

(Sorry Marty, I couldn’t resist.)