A US appeals court has ruled that America Online cannot assert
trade mark rights over other e-mail service providers in the phrase
“You Have Mail” when using it simply to inform a subscriber that
his or her account has received new e-mail.
The court reasoned that, in this context, the phrase is simply
being used with its common meaning and therefore is a generic
phrase.
The case was brought by America Online against AT&T which
uses the phrases “You Have Mail”, “IM” and “buddy list” for its
e-mail and instant messaging services. America Online alleged trade
mark infringement and trade mark dilution.
The court rejected evidence that a percentage of consumers
identify the phrase “You Have Mail” with AOL and said “IM” is an
abbreviation of the generic name for the product, not a trade mark.
The issue over AT&T's use of the phrase “buddy list” will be
determined at a later stage.
One of the panel of judges observed that because the AOL service
now uses the phrase “You’ve Got Mail” instead of “You Have Mail,”
the question of whether its use of the latter phrase should be
protected is irrelevant.
