The Wall Street Journal asks, “Will Wikipedia Mean the End Of Traditional Encyclopedias?” It’s a debate between Wikipedia and Brittanica, if you can just imagine that.
It’s certainly meaning the end of traditional PTO practice. It’s driving trademark lawyers nuts (see here, too). I liked this exchange involving colleague John Berryhill on yesterday’s INTA email list, reprinted with his permission:
>The point is, why should Wikipedia be even considered as a reference on
>the trademark side, when it is not on the patent side?
Oh, that’s easy. Because the Wikipedia entry on trademarks says that I’m always right (or at least it will in a few minutes).
>On the patent side, suppose the issue is the level of ordinary skill in
>some particular art. Could not one person or entity stuff Wikipedia
>with entries suggesting that it is common in the field to use
>such-and-such or to do so-and-so, with an eye to influencing a patent
>examiner or a court?
No. Because obviousness is measured from the date of invention. Whether an invention was obvious at that fixed point in time cannot be measured according to a reference that changes.
Your specific problems with Wikipedia are well-taken, but whether a trademark is distinctive is always a question of “present” market reality.
It doesn’t matter whether it was distinctive ten years ago. EVERY invention, however, is obvious after it was invented. Whether an invention is obvious “now” is never a relevant question. Whether a trademark is distinctive “now” is always a relevant question.
To qualify as a reference for obviousness, the reference must pre-date the invention. That can’t be done with Wikipedia.
> what about just plain
> errors made by unqualified Wikipedia authors?
Yes, certainly, relying on the opinion of a single idiot to determine whether a trademark is distinctive is not reliable.
To get a reliable view of the matter, one must conduct of scientific survey of thousands of idiots.
> It doesn’t matter whether the issue relates to patents or trademarks.
>It’s a question of reliability as a reference.
Putting aside the specific example of Wikipedia – a hypothetical “consensus based” mechanism which relied upon the collective opinion of those thousands of relevant idiots *would* be relevant to distinctiveness, but would never be relevant to novelty or obviousness. In UDRP disputes, I have often seen complainants argue that they deserved .com, because they have a high Google rank for “word”. I would agree it is probably a more attractive argument for distinctiveness than Wikipedia, but also subject to particular flaws.
After all, trademark examiners rely on newspaper and magazine articles as well, which may include citations written by unqualified newspaper and magazine reporters.
On the other end of things, Examining Attorneys rely uncritically upon 2(f) affidavits, even when the facts can be confirmed otherwise. Consider, e.g. US TM Reg. No, 2,945,899 for “cheaphotel.com”, allowed on the basis of a
2(f) affidavit. Then, if they don’t block it soon, consider what archive.org demonstrates as to whether or not *any* use was being made of “cheaphotel.com” as a mark prior to one week before the application was filed.
But please don’t take my comments as some sort of endorsement of Wikipedia as a reference. I was merely intending to point out that shifting perceptions over time are relevant to trademarks in a way that they are not relevant to patents.
John seems to represent a pretty good cross-section of trademark practitioners, I think. Is the PTO listening? Actually, yes. This situation will, I believe, change.
Originally posted 2015-07-08 11:30:30. Republished by Blog Post Promoter