It's 2002. You're about to print an envelope when you discover the digital stamp supply on your PC has run dry. Are you more likely to call out: "Honey! We need to buy more e-stamps!" or "Honey! We need to buy more information-based indicia!"
Odds are you'd pick the first -- unless you were the US Postal Service, which coined the clunky term "indicia." And that doesn't set well with E-Stamp Inc.
The company is hell-bent on keeping its registered trademark -- big E, big S -- from becoming the generic term for electronic postage.
"There are other companies that have established a trademark by adding an 'e' in front of a common name," said Ed Malysz, E-Stamp vice president and general counsel. "And I think we're one of many that are able to accomplish that."
Easier said than done in the e-age.
E-Stamp is selling an eponymous Internet postage product, a name critical to its branding and marketing success. That's why, like any responsible trademark owner, E-Stamp is trying to protect its name against the dreaded anonymity of generic use.
Any company's long-term prospects of "preserving its mark" depends on several factors. Carving out an e-name these days involves such unpredictable forces as the nature and state of the name itself, the maturity of its business category, and the intensity of its marketing efforts -- not to mention a healthy measure of fate.
"[The Internet is] speeding the whole process up," said Karren Shorofsky, an attorney with Pillsbury Madison & Sutro LLP who specializes in trademark and intellectual law. "You don't have as much time to establish a beach head before the vernacular may overtake you."
E-Stamp's defense arsenal includes marketing and consumer campaigns and the big gun of legal action. In fact, the company is already waging a trademark-related lawsuit, filed in June in the US District Court of Central California against Dave Lahoti.
Lahoti's use of the term draws "confusion into the marketplace and [weakens] the value of E-Stamp Corp.'s mark to identify its products and services," the complaint reads.
"He's actually making use of that term in connection with Internet postage. That results in trademark infringement," said Malysz.
Lahoti disagrees. "We are actively pursuing the revocation of their mark, because we've already demonstrated that it's gone far beyond the proprietary thing. Just about anything "e" is generic these days."
To prevail in the suit, the company must prove that E-Stamp, the product name, is not generic and is tightly associated with E-Stamp, the company. The company has to effectively dissect the circumstances of time and reveal the inextricable bond between itself and its mark to prove its case.
E-Stamp "has become associated in the minds of consumers with plaintiff's goods and services, and has become a famous mark," the company contends in documents filed in support of its lawsuit.
Public recognition of its trademark has only come about by the company's extensive efforts to promote its mark, E-Stamp maintains, citing such factors as its three-year history, the use of the trademark on its Web site, and a consumer survey conducted to substantiate its case.
The company surveyed "a number of individuals," asking them what they would call this concept of getting postage online. According to Malysz, "There was no clear definition that anyone had with regard to this particular service," he said.
In his motion for a preliminary injunction, Lahoti said he used the word "estamps" on his business Web site "in the same way 'email' is used. Consistently, throughout the computer industry, the terms 'e-stamp,' 'e-stamps,' 'estamps' are commonly being used in place of electronic stamps."
Blame the nation's postmaster general, Lahoti's argued in the motion. "If the plaintiff is consistent, it should also file suit against the Postmaster General, Marvin Runyon, who also used the term 'e-stamp' in generally describing electronic stamps."
So far, the court has granted a preliminary injunction preventing Lahoti from using the term e-stamp in connection with Internet postage. The company's competitors, which include Stamps.com and Neopost, both manage to use other terms -- such as Internet postage -- in their business.
Following the preliminary ruling, E-Stamp will set out to prove the "secondary meaning" behind its mark. For a relatively weak "descriptive" trademark -- one whose words directly describe what it represents (electronic-stamp) -- secondary meaning indicates that the mark has taken on additional significance.
E-Stamp contends in its suit that its mark is more than descriptive, that it's inherently distinctive. That, however, is for the courts to decide.
Out of court, the survival of the E-Stamp mark may depend on the emergence of any other generic contenders. It is an outcome the company can affect, but not ultimately control.
"If 'Internet postage' becomes a common reference, it becomes a generic term," Malysz said. "And then E-Stamp is able to market the product as 'E-Stamp Internet postage.' We need to [be able to] describe something associated with our trademark."
Neopost's Jon Kim is banking on "postage" to remain the generic term. "I think you're more likely to say your meter's out of 'postage.' We download more 'postage.' It's not like you're saying you have to download five stamps."
E-Stamp believes that argument is in its favor. "Could it be Internet postage, could it be PC postage? I think there is a great likelihood that they would," Malysz said.
Such is the choice for any company in E-Stamp's position, said Shorofsky. "You can stand and fight or fold and decide that it's early enough to get some value in other names. E-Stamp may feel like it's in [a good] position. And the marketing people [at E-Stamp] are going to fight very hard to not have to dump the mark."
A slew of applications for trademarks have been filed for e-commerce or e-business, both of which stand little chance of ever passing the distinctiveness test.
ETrade, the name of a popular Internet stock trading service, may have better chances for survival, Shorofsky said. Its timing was better, for one thing. ETrade coined the name for an activity that wasn't well known when the company struck, and it has since gone wild.
E-Stamp, with any luck -- and lots of effort -- may find itself in the same boat.
"The problem with all the e's right now is that it has become ubiquitous," Shorofsky concluded. "It has become a stand-in for anything related to the Internet.... You can still put anything after that 'e' and still get your trademark regular out of it. But I think the 'e' is becoming less distinctive."
