August 2008
Cloud of Mystery Hangs Over Dell's Trade Mark
The U.S. Patent and Trade Mark Office has caused some confusion by seemingly backtracking over Dell’s application to trade mark the term “Cloud Computing”. Having issued a “Notice of Allowance” on 5 August, the very next day the notice has been cancelled and the mark has been returned to examination.
The controversy arose because of the descriptive nature of the term “Cloud Computing”. The term has become widely used in the computing industry to describe the situation where a software or IT service can be offered to users via the Internet without the end user having to install the software on their machine. Cloud computing structures often utilise a large number of different computers in different locations connected to the Internet to run and deliver the software.
Trade mark law prevents any party from registering a term as a trademark when that term is descriptive of the goods or services provided or is used as a generic term in the industry. In this case it would appear that the US PTO may have failed to identify exactly how the term was in fact used in a descriptive way in the industry.
The computer technology community had expressed alarm upon the Notice of Allowance being issued and hundreds of articles and blogs on the subject sprung up all over the Internet. Dell defended the award stating that they were not seeking to prevent the use of the term by other entirely but only in relation to products conforming to the description of their servers, hardware and services.
Withdrawal of the Notice of Allowance by the PTO is not a sure sign that the mark will eventually be refused. The decision may be due to concern over the exact description of the goods and services that the mark covers, or it could be due to a late opposition. However, the fact that it comes in the wake of media coverage and widespread concern would suggest that the US PTO may have been unaware of some of the criticisms now levelled at the trade mark application.
Briffa’s commentSuch a late objection by a trade mark registry is very rare. Some of the confusion seems to have been caused by the fast moving pace of the computing industry. The application was actually filed one and a half years ago and much of the examination will have been conducted some time before the Notice of Allowance was issued. Whilst the term had been used in the industry prior to the application being filed, the term has become much more prevalent recently.
Proprietors of trade marks in fast moving and developing industries have to take special care to ensure that their mark is still connected to their particular products and not to products of that type generally. A mark can be revoked at any time if someone can show that the term has become generic, even after the mark is granted.
Proprietors may need to have a strategy and perhaps standard low-level infringement letters to send to people using their mark inappropriately. This can be costly and unpopular but in the long run may be necessary to protect the goodwill of a business.
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