Wednesday, June 15, 2011

today's TM question

Checking an old email account, I got an ad from YouSendIt offering to allow me to send files to "[my] Dropbox."  Intrigued, I clicked, because I rely on Dropbox and like it a lot (despite the fact that it just did a very scary thing when I tried to sync with Eric Goldman for our casebook!).  But YouSendIt means its own Dropbox, capitalized.  So, much depends on what kind of mark Dropbox is for cloud storage.  Is it generic?  Descriptive?  I bet Dropbox wants it to be suggestive, and in an age of competing internet analogies I wouldn't exclude the possibility that a court would so find, but I'm going to go with descriptive.  It's a great name for a cloud storage service that enables sharing with selected other people, but that greatness in communicating its meaning may weaken its conceptual strength as a mark.

Nonetheless, Dropbox has secondary meaning in the field, and I was at least uncertain about what YouSendIt was offering.  Descriptive fair use?

3 comments:

Josh King said...

I had the same reaction you did. I don't see it as descriptive fair use. "Dropbox" is not generic enough, and the use of capitalization shows what their intent was . . .

John Ottaviani said...

I'm with Josh. I would categorize "DROPBOX" as suggestive, not descriptive. The use of the term by the new service is misleading, at least to existing Dropbox customers, so there is some measure of secondary meaning there even if the term is considered descriptive. There are plenty of other terms the new service could use to describe its services. And the new service is not using the term to either compare its services to Dropbox's services or to refer to DropBox's services. So I don't see a fair use defense, either.

Rebecca Tushnet said...

John, I'm going to stick with descriptive, because it readily calls to mind the function of the feature--and I have in mind that early TTAB ruling on "retriever" for a search engine, when there was a sort of meaning contest about the relevant metaphors. Dropbox got into the game early enough that it both needed to communicate what it did by readily understandable analogy and also influenced the understanding of what its services were, both of which I would say are reasons to call the mark descriptive. (I'm pretty sure that Westlaw's TWEN education service also describes its "transfer a time-stamped file to your professor" function a dropbox, too, but I'll have to check.)

That said, I do agree there's secondary meaning. I don't think there's a nominative fair use, since it isn't a comparison with Dropbox, but it might well be a descriptive fair use. Capitalization suggests use as a mark, but that's a pretty fine line.

What are the good alternatives to "dropbox" for "file uploads that only authorized people can download"? Serious question: I don't know what the developing lingo is.