Court buys AOL claim to 'Buddy List'

The ruling was issued Wednesday by the US Court of Appeals for the 4th Circuit in Richmond, Virginia, in a lawsuit filed by America Online (AOL) against AT&T, whose WorldNet Internet service uses similar terms. AOL, which merged in January with Time Warner, claimed the terms were widely associated with AOL and pointed to its registration of the term "Buddy List" with the US Patent and Trademark Office (PTO).

AT&T successfully defended itself in the US District Court in Alexandria, Virginia, which had issued a summary judgment in favour of the company on the grounds that all three terms were too generic to function as trademarks. But the appellate court said the validity of "Buddy List" as an AOL trademark could not be determined on summary judgment and sent that portion of the ruling back to the district court. It also reversed the district court's order directing the commissioner of the PTO to cancel the registration of "Buddy List" as a trademark.

AOL Time Warner uses the terms "Buddy List" and "IM," to describe features of its Instant Message chat service, and it uses the term "You Have Mail" in connection with its e-mail service. AT&T's competing WorldNet Internet service uses the terms "Buddy List," "You have Mail!,"and "I M Here."

The appellate court said that because AOL had not registered "You Have Mail" with the PTO or previously attempted to enforce it as a trademark, it had a greater burden to establish its ownership of the mark. The phrase has been used since the 1970s to inform computer users that they have e-mail, the ruling said.

AT&T noted in its arguments that the Unix operating system has displayed the phrase "You Have Mail" or "You Have New Mail" whenever a user has received electronic mail since before AOL was formed, according to the ruling.

AOL argued that "IM" has frequently been associated by the media with AOL and that no other online or Internet service provider calls its chat service "IM." But the appellate court said it failed to provide enough evidence to support its argument and agreed with the district court's decision, which concluded that "IM" was an "initialism."

AOL Time Warner is pleased with the ruling, said spokesman Jim Whitney.

"We have said from the beginning that 'Buddy List' is a valid trademark synonymous with AOL and the AOL experience," he said.

Join the PC World newsletter!

Error: Please check your email address.

Our Back to Business guide highlights the best products for you to boost your productivity at home, on the road, at the office, or in the classroom.

Keep up with the latest tech news, reviews and previews by subscribing to the Good Gear Guide newsletter.

Margret Johnston

PC World
Show Comments

Essentials

Microsoft L5V-00027 Sculpt Ergonomic Keyboard Desktop

Learn more >

Lexar® JumpDrive® S57 USB 3.0 flash drive

Learn more >

Mobile

Lexar® JumpDrive® S45 USB 3.0 flash drive 

Learn more >

Exec

HD Pan/Tilt Wi-Fi Camera with Night Vision NC450

Learn more >

Lexar® JumpDrive® C20c USB Type-C flash drive 

Learn more >

Lexar® Professional 1800x microSDHC™/microSDXC™ UHS-II cards 

Learn more >

Audio-Technica ATH-ANC70 Noise Cancelling Headphones

Learn more >

Budget

Back To Business Guide

Click for more ›

Most Popular Reviews

Latest News Articles

Resources

PCW Evaluation Team

Azadeh Williams

HP OfficeJet Pro 8730

A smarter way to print for busy small business owners, combining speedy printing with scanning and copying, making it easier to produce high quality documents and images at a touch of a button.

Andrew Grant

HP OfficeJet Pro 8730

I've had a multifunction printer in the office going on 10 years now. It was a neat bit of kit back in the day -- print, copy, scan, fax -- when printing over WiFi felt a bit like magic. It’s seen better days though and an upgrade’s well overdue. This HP OfficeJet Pro 8730 looks like it ticks all the same boxes: print, copy, scan, and fax. (Really? Does anyone fax anything any more? I guess it's good to know the facility’s there, just in case.) Printing over WiFi is more-or- less standard these days.

Ed Dawson

HP OfficeJet Pro 8730

As a freelance writer who is always on the go, I like my technology to be both efficient and effective so I can do my job well. The HP OfficeJet Pro 8730 Inkjet Printer ticks all the boxes in terms of form factor, performance and user interface.

Michael Hargreaves

Windows 10 for Business / Dell XPS 13

I’d happily recommend this touchscreen laptop and Windows 10 as a great way to get serious work done at a desk or on the road.

Aysha Strobbe

Windows 10 / HP Spectre x360

Ultimately, I think the Windows 10 environment is excellent for me as it caters for so many different uses. The inclusion of the Xbox app is also great for when you need some downtime too!

Featured Content

Latest Jobs

Don’t have an account? Sign up here

Don't have an account? Sign up now

Forgot password?