There has been a bit of controversy over O'Reilly's "Web 2.0" service mark cease-and-desist letter and their subsequent "we had to" response. I'd say Mike Arrington correctly predicted the lynching, though some are defending O'Reilly. (Scoble is just upset he's no longer the King of Evil).

Fortunately, the issue has been resolved, but not before the PR damage was done. 

We're not claiming exclusive use of "Web 2.0" in all contexts. Our service mark applies only to "Web 2.0" when used in the *title* of "live events" such as conferences and tradeshows.

Rob Hyndmann wrote exactly what I was thinking, especially the first and last points.

First, there’s the effort (without any trace of irony, it appears) to restrict and monopolize the use of the term in connection with events held to educate and evangelize … a set of technologies that are about collaboration, sharing and open access to information.

Next, there’s the threat against a non-profit, of all things, innocently trying to do nothing more than make the world a better place.

Then there’s the attempt to put the toothpaste back in the tube with a strong dose of deceptive corporate-speak that is the very antithesis of Web 2.0.

Next, there is the effort to portray themselves as an innocent victim by claiming they are legally required to issue a cease-and-desist (the “pity me, I have no choice but to be evil” defence), deceptively ignoring the fact that it was their initial choice to register the mark, intending when they registered it to later protect it and send cease-and-desist letters in defence of it, that brought them to this moment. Their choice, mind, a choice for which they bear responsibility that they are now seeking to avoid.

And finally, as Paul notes, there’s the original effort to monopolize the use of a term that is clearly generic and descriptive (whether or not it was first coined five years ago). The O’Reilly folks gamely try to deflect this one by claiming that what they are doing is a ’standard business practice’. Bleh - another attempt to avoid taking responsibility for the decision to monopolize use of a descriptive, generic term.

PR blunders aside, I have a few additional comments to add as far as the legal issues here.

The whole point of trademark is to protect symbolic information - names, logos, and slogans that indicate source.  Unlike the explicitly granted powers for copyright and patent, trademark is rooted in the Commerce Clause and the government interest for protection is to prevent consumer confusion. Indeed, the traditional test for trademark infringement is likelihood of confusion, and even dilution theory is rooted in protecting the distictiveness of a mark. 

If a mark becomes generic, even if it was once worthy of protection, it ceases to be protected because the mark is no longer associated with a single source. To use the classic example, when someone says "aspirin" today they are referring to a type of product, not a specific product from a specific source - even though, at one point, the source and provider were one and the same.  The symbolic link is so weak that no one would reasonably assume that the aspirin came from a particular manufacturer.

Policing the mark - even internationally, as is the case here - is a necessary step to prevent death by genericism. The only problem - one that seems to have eluded CMP and O'Reilly - is that you have to prevent it BEFORE the mark becomes generic.  You can't encourage everyone to use your buzzword and then claim it's unique and distinctive and worthy of protection.

O'Reilly is policing the use of the term narrowly (i.e., allowing others to use Web 2.0 freely, except as the name of a conference). Someone can't claim a mark in "Aspirin" by having an event named "Aspirin Conference".  They may get protection in the latter, assuming the term has acquired secondary meaning and can overcome its generic & descriptive nature.

Oh, and assuming that O'Reilly did receive protection for the mark, it still isn't likely to satisfy the likelihood of confusion test either. Their event is clearly branded as the it@cork Web 2.0 Half Day Conference. The use might constitute dilution by blurring, but that depends on the strength and fame of the mark (moreso under the pending Trademark Dilution Revision Act).

Maybe some good will come out of this, though. I've said in the past I hate buzzwords like Web 2.0, and maybe this will be enough to get us to collectively abandon the Web 2.0 meme.

Web 3.0 - because 2.0 was so 2005.

Update: As Marty put it, "f you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it's virtually impossible to do both."

Tags: web2.0, web20