[4512] in cryptography@c2.net mail archive
Re: P1363, name "RSA"
daemon@ATHENA.MIT.EDU (Arnold G. Reinhold)
Tue Apr 13 10:45:07 1999
In-Reply-To: <199904120216.TAA02724@acid.bpm.ai>
Date: Tue, 13 Apr 1999 00:10:08 -0400
To: Sameer Parekh <sameer@bpm.ai>, schlafly@mail.cruzio.com (Roger Schlafly)
From: "Arnold G. Reinhold" <reinhold@world.std.com>
Cc: vin@shore.net, smb@research.att.com, jdg@rahul.net, cryptography@c2.net,
cypherpunks@algebra.com, stds-p1363@majordomo.ieee.org
At 7:16 PM -0700 4/11/99, Sameer Parekh wrote:
> If RSA failed to attempt to protect their trademark in 1996,
>then they will have no luck trying to protect their trademark now. If,
>in fact, RSA did not claim trademark protection in 1996 then there is
>absolutely no way any court will grant RSA any trademark protection
>for RSA now and in the future.
> I'm not a lawyer, but you don't need to be a lawyer to know
>how to protect a trademark, and RSA did exactly the *wrong* thing to
>protect their trademark.
>
I am not a lawyer either, but I believe your understanding of US trademark
law is not correct. While it is a good idea to protect your trademark,
failing to do so does not guarantee you lose your trademark rights. Here is
a relevant paragraph from Joe Liu's "An Overview of Trademark Law"
http://cyber.harvard.edu/metaschool/fisher/domain/tm.htm
"Trademark rights can also be lost through genericity. Sometimes,
trademarks that are originally distinctive can become generic over time,
thereby losing its trademark protection Kellogg Co. v. National Biscuit
Co., 305 U.S. 111 (1938). A word will be considered generic when, in the
minds of a substantial majority of the public, the word denotes a broad
genus or type of product and not a specific source or manufacturer. So, for
example, the term "thermos" has become a generic term and is no longer
entitled to trademark protection. Although it once denoted a specific
manufacturer, the term now stands for the general type of product.
Similarly, both "aspirin" and "cellophane" have been held to be generic.
Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y. 1921). In deciding
whether a term is generic, courts will often look to dictionary
definitions, the use of the term in newspapers and magazines, and any
evidence of attempts by the trademark owner to police its mark."
Failure to protect a mark is a consideration in a genericity case, not the
sole deciding factor. Since almost no one the general public has ever heard
of RSA, genericity as defined above would be hard to argue. Even if you
could convince a judge to break new ground and rule that in this case the
cryptographic community is the relavant public, you would still have to
prove that the mark is no longer connected with RSADSI in the minds of most
cryptographers, a difficult and expensive process at best. Declaring a mark
generic is the capital punishment of trademark law and I suspect most
judges would bend over backwards to avoid such a ruling.
Arnold Reinhold
