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.