Web 2.0 TM 2.0

27 May ’06

We mesh guys have been having pretty a intense backchannel discussion on the Web 2.0 trademark controversy. Stuart, online branding guru, recognizes the importance to the O’Reilly people of protecting a brand they came to first and into which they breathed life. He’s right, of course, to insist that that kind of effort be protected. In our own small way we’ve created a distinct identity for mesh, and it would be almost sickening to see that identity diminished through imitation.

But this case is different, and I’m not just speaking from the perspective of one who has used Web 2.0 to promote a conference (for one thing, mesh has already become bigger than that, and next year, if we repeat, the World will have moved on from “Web 2.0”, I’ll wager). I think there are deeper issues here. I explained my opinion in more detail in an email to Stuart and the other mesh guys yesterday and Mathew suggested I post it, so here it is (with a couple of edits to keep the censors happy).

Last point before I get to it – Cory has now (finally) posted on this, and his opinion (essentially, the mark has suffered genericide, party’s over, everyone go home now), while considerably more elegantly put than mine, is on all fours with it, but interestingly enough, comes at the issue from the opposite end. And Kedrosky’s posted again on it, and one of his points is that the breadth of meaning makes it inappropriate for protection – essentially, the same argument. Ditto Jeff Nolan.

…….

But the real issue is not the demand against Cork. That was obviously a dumb thing to do, and the spanking was well-deserved. The real issue is the trademark itself. It’s not enough to be be first (see below). The phrase itself has to be – er – ‘trademarkable’. (The fact that it was registered doesn’t mean that it ought to have been – the USPTO makes lots of mistakes (remember NTP?), and TM lawyers spend a lot of time in court over it.)

Another way of looking at it… How else do you describe Web 2.0? ‘Social media’? ‘What’s happening on the web now’? Remember the effort you’ve had to go to to explain it in interviews? The reason descriptive trademarks aren’t generally given is because the terms describe the things themselves. This isn’t “Coke” or “DuPont”, right? Because it’s descriptive, the word is actually the thing itself. And there are only so many nouns out there, right? And Nicholas Carr’s curious assertion that “Masters”, “Vista” and “New Yorker” are descriptive notwithstanding (um, do you turn on your TV to watch some, er, ‘masters’ walking around a golf course; is Microsoft’s OS a type of Vista? and so on), descriptive words are pretty easy to identify. They describe the thing itself. Car. Boat. Internet. You get my drift (he says, drifting). As such, they are weak words for a trademark. They monopolize language to an unacceptable degree.

Note, it isn’t (and from a legal policy standpoint, it shouldn’t be) enough that they coined it first. For one thing, no one owns our language, whenever they come to it. Getting first to a word that is adopted in the vernacular as a noun maybe gets you in the news, surely gets you into someone’s dictionary, but it isn’t enough to get you a TM.

But perhaps most importantly, the phrase is now generic – certainly among those who use it in communication – geeks and whatnot. Web + the numbering system geeks use to identify sequential versions. Duh, right? It would have come inevitably. Only now it can’t, in the case of conferences. Remember – no one can now market a conference as being about Web 2.0. Possibly, not even use the phrase in any marketing collateral for a conference. **No one.** Just what were we going to do with Web 2.0, other than meet at conferences to talk about it (OK, and blog about it)? And what do we call all of those events we’re still going to hold about Web 2.0 and which, while we’re there, in them, talking up a storm, we’re all going to describe as ‘Web 2.0’? So, in real terms, our culture is poorer.

Finally, they simply don’t need to monopolize the word to create a distinctive character for their conferences. There are many other ways to distinctively brand without locking up the few descriptive nouns that can be used to efficiently communicate a particular concept. Call it “mesh”, for example, hold one conference that you describe as being about Web 2.0, and thereafter, you have, hey presto, a distinct and valuable identity that efficiently communicates meaning and that doesn’t by its monopolization of the phrase trench on the efficient and culturally important use of language. Monopoly bad, culture good.

So all of the conferences that would have been advertised as being about Web 2.0 now won’t be. They’ll have to be outwardly about something else. (Imagine the annual cat show – if there is such a thing – having to be renamed the “feline” show, because someone nabbed a trademark on the word “cat” for use in trade shows.) That’s the issue, for me. And why I think enforcing the Web 2.0 TM is a very selfish thing to do.

This would generally resolve by someone challenging the mark on the basis that it’s generic. But – the conference market isn’t big enough to make it worth anyone’s while to take a shot at this in Court, and no one will otherwise really have the stomach to criticize O’Reilly for doing this, for fear of alienating the opportunities he can make available. So, the mark will likely stand, and its chilling effect will likely continue.

Update: Legal niceties of CC’ing TM’s aside, as usual Mathew breathes good sense in this whole affair.

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