What Lies Beneath the Web Trademark Cases?

While the rest of the world works on expanding the number of top level domains (TLDs) available, adding dot-travel and dot-sex to dot-com and dot-org, a couple of big-name companies are demanding absolute control of the Web in their own way.

Most recently, Ford Motor Company sued online automotive marketplace Model E Corporation and principal investor Softbank Venture Capital over what the one hundred year-old automaker considers to be a violation of its Model T trademark.

Although the Model T went out of production in 1927, Ford does have the trademark registered for everything from postcards to air fresheners.

Meanwhile, in another bid for Web name domination, the nearly four-hundred year-old Harvard University entered into a trademark tangle with Net startup notHarvard.com.

Fighting Words

Despite noise from Ford, Model E is already promoting its service, which caters to those who can afford to pay a hefty monthly fee to lease, license, insure and maintain custom-made automobiles. The automobiles will not be called Model E, but rather will be customized versions of existing cars.

As for big, bad Harvard’s attempt to teach its nemesis a legal lesson, the esteemed Ivy League school believes — or says it believes — that notHarvard.com is trading on Harvard’s goodwill for financial gain. The startup company offers free online educational courses and peddles goods and services to college students.

For example, Net bookseller Barnesandnoble.com made a minority investment in notHarvard.com, so its users will be able to access free online classes after purchasing a product online.

notHarvard.com founder Michael Rosenfelt coined the term “eduCommerce” to describe its business model, a name that fits the online education-plus-store model to a “T.”

Rules of Engagement

To win a trademark case, a showing has to be made that consumers are likely to be confused. The only exception is in when a famous trademark is in play. In those cases, the complaining party, such as Ford or Harvard, does not have to show purchaser confusion between two products, but rather that the use of a similar trademark by the other company will “dilute” the distinctive quality of the famous trademark.

With the advent of Internet domain names, new theories had to be devised about infringement of a product name by a Web site name, and the details are still being hammered out. Some basic principles remain, however.

Apparently, nobody told ancient institutions Ford and Harvard about the Web’s nuances.

Road Rage

It is highly unlikely that consumers will actually think the Model E car service is related to Ford’s Model T. According to published reports, Model E CEO William Li — who left a job with a Ford Motor Co. subsidiary last year — said almost everything in Silicon Valley begins with “e,” and the name Model E refers to “an ideal, not a product.”

So does Model E dilute the distinctiveness of Model T? Ford is arguing that because Model T is the name of the most famous vehicle in history, Model E is likely to mislead prospective purchasers as to a possible connection between the two companies. Although the irate automaker is demanding that Model E pull off the highway, it looks like a classic case of road rage to most industry onlookers.

Honk! Honk! The names are different. An online car service called Model T might be trading on Ford’s reputation, but Model E is a horse of different color. Because of the lack of confusion and lack of trademark dilution, the question becomes: why is Ford pursuing a case against the Model E auto service? Answer: because it can.

In a world where the number of possible domain names is increasingly narrowing — and consumers are increasingly savvy about the differences between this Web company and that, especially when they can afford custom-made cars — Ford’s bully tactics are out of place.

Schoolyard Brawl

According to reports, Harvard takes it “very seriously” when other educational institutions use the Harvard name for marketing purposes. The Internet startup says the “not” in its name makes all the difference. That’s right, the “not” makes confusion by the relevant consumers virtually impossible. While notHarvard may poke fun at the old school, no college-aged Web surfer will be confused. And notHarvard.com does not dilute the value of Harvard’s hallowed name. It would take more than a cheeky upstart to do that.

So how can Ford and Harvard seriously demand trademark control beyond the reach of logic? What they are complaining about is not even close to the abusive registrations of “Microsof.com,” “Reutersnews.com” and “Olympiconlinestore.com.” Those registrations obviously posed a danger to Microsoft, Reuters and the United States Olympic Committee.

Rather than run to court, it’s time for the old-timers to give the newcomers some entrepreneurial elbowroom.