"You Have Mail" And Other Terms Are Generic Produced by: Asia Green

Topic Cyber law- laws, or a specific law, relating to Internet and computer offenses, esp. fraud or copyright infringement.

Description Federal district court held that "You Have Mail," "Buddy Lists," and "IM," as well as the mailbox icon for are generic trademarks that may not be protected by AOL, so its suit against AT&T for using such terms was dismissed. The terms had been in use before AOL claimed ownership.

Key Words Generic Trademarks- This was developed after this suit claiming certain terms can’t be claimed by one company.

Facts AOL applied for trademark registration for "You've Got Mail" and "You Have Mail" and the mail box icon that accompanies it. It had already received a service mark for "Buddy Lists." and uses the term "IM" over which it claims ownership. AT&T's internet service later began to say "You Have Mail!" and used "I M Here" for its chat service. AOL sued for infringement. AT&T defended that the terms involved are generic and so not subject to trademark protection.

Decision The term "you have mail" in electronic transmissions goes back to at least 1985, before AOL began to use the term, so it is a generic term that AOL cannot claim. Similarly, "IM" appeared in various places before AOL claimed ownership, so it is also a generic term. Many firms in the industry use "Buddy Lists," it was not original to AOL, so its service mark for that is cancelled and it may not claim protection for the mailbox icon for . Since AT&T does not use "you've got mail," it cannot contest AOL's claim over that term in this litigation.

Cites America Online, Inc. v. AT&T Corp., 64 F.Supp.2d 549 (E.D., Va., 1999)