Say a couple of publishing giants heralded the launch of a new magazine only to find that the title was already in use. That scenario is unfolding this week in San Francisco, where E-Media, a small Internet consulting company, has formally asked that a joint venture between Ziff-Davis and IDG stop using its trademarked name.
E-Media sent a cease-and-desist letter 10 August insisting that the two computer-trade publishing companies -- who collaborate on the incipient eMediaweekly -- stop infringing on the trademark. If eMediaweekly does not respond to his letter, E-Media founder and president Ken McCarthy said he will be compelled to take the matter to court.
"If you own a trademark and you don't protect it, you lose it," McCarthy said. "That's the way the law works."
McCarthy's company has owned the trademark since February 1996 and has used the name since 1993, he said. He first learned of eMediaweekly's planned use of the name when he received an unsolicited email message promoting the title's pending launch. McCarthy said he assumed the publishers had not conducted a proper trademark search before deciding on a name.
EMediaweekly is expected to appear on newsstands any day now. Mac Publishing LLC, the joint venture of publishers Ziff-Davis and IDG, recently replaced the long-standing print version of MacWEEK with the new publication. The trade magazine will focus on what the company calls "cross-platform digital media," while MacWEEK will continue as a limited, online edition only.
Although Mac Publishing CEO Colin Crawford had not heard of McCarthy's complaint prior to being contacted for comment by Wired News, he said that attorneys had, of course, conducted a trademark search prior to the selection of the name. Their obvious conclusion, he said, was that there was no problem of infringement.
"They're in a completely different space," Crawford said of E-Media. "I don't think they have any ownership here." He said he would be happy to discuss the issue with E-Media directly.
McCarthy said his situation parallels a recent trademark dispute involving Microsoft. The software superpower agreed to pay a trademark owner US$5 million so it could continue using the term "Internet Explorer" for its Web browser software.
But attorney Nicholas Carlin said it's never easy to predict the outcome of a trademark dispute.
"Generally, if a mark is descriptive, then it's not going to be protectable under trademark law," he said. "If you had a company that makes brown bags and it was called the Brown Bag Company, it's not entitled to trademark protection, because [the name] just describes what it's doing." A name must have a secondary meaning associated with it, he said.
If "emedia" is deemed a general term used to describe electronic media, McCarthy could face an uphill battle. "Email is a description, not a trademark," Carlin said. "The same thing could arguably be said for emedia."
Crawford said the term is already experiencing general use. Conducting an Internet search for emedia, he said 10,267 pages containing the term were returned.
"Just because a lot of people are doing the wrong thing doesn't make it right," McCarthy said.
One possibility, Carlin said, is that E-Media could win limited protection of the trademark, which would prevent consultants who offer services similar to E-Media from using the name, for example.
McCarthy maintains that the trademark is strong in all respects and that it is his responsibility to keep emedia from becoming a generic term. "I guarantee you that in 1993 and 1994, when we first started using it, no one knew what the hell we were talking about," he said.
It's not the first time McCarthy has felt compelled to protect his name. He said he has had to pursue discussions with several small companies that have used the term. In one such case, an organization was applying the term to its guitar-instruction method. McCarthy said he came to a reasonable financial settlement of the issue: The company, eMedia Corp., pays a royalty to E-Media Inc. for the use of the mark.
