Microsoft scoffs at the existence of G.ho.st ('s TM)

A trademark dispute has arisen over the term "No Walls."G.ho.st claims that they have a pending trademark registration of their tagline "No Walls" and has been using it for the past eighteen months. (See Kara Swisher, Yahoo) Microsoft, "to their knowledge", denies it's existence. However, G.ho.st. has applied for the mark "No Walls", serial no. 77576419, under Int'l Class 009 on September 23, 2008.

Claiming that "No Walls" is the tenet of their business model which facilitates free, personal computing through an online presence, as opposed to being tied down by "physical devices", the CEO of G.ho.st. has claimed "unfair competition, palming off and dilution of our trademarks."

Microsoft, fires back stating that:
"Even if they did [own a trademark], they cannot prevent others from using the words ‘no walls’ together in a sentence or in a descriptive manner in ad copy. Nor can they claim ownership in word ‘wall’ or the idea of a wall. The tagline for Microsoft’s new ad campaign is ‘Life Without Walls’–a slogan that, taken in its entirety, is not confusingly similar to Ghost’s purported ‘motto.’”

The retort touches on some basic principles of trademark law. These are generic terms set up as a combination mark - so what? I can use it as a descriptive term. That is a Classic Fair Use defense. Descriptive marks often suffer from this vulnerability. Interestingly, however, in Zvi Schreiber's letter, the companies represented benefits attempts to form an association with "No Walls" and the lack of physical devices.

E.g:

* A personal computing environment (desktop, file system, apps) which is not “walled” into - or installed on–a physical devices–but is hosted and available from any browser

* A personal computing environment which is free of charge and not only for the well off

* A personal computing environment that does not require administration–no need to install or update software, no need for the user to perform backups or fight viruses

* A personal computing environment which is online and allows all users globally to share with each other directly.

A statement that an "Idea of a wall" cannot fall under ownership claims, attacks exactly these benefits. Though trademark law or any form of intellectual property right does not protect ideas, per se, trademark law certainly does applaud "association". This is the very basis of acquired distinctiveness. What do you associate "No Walls" with - the company. Why? The concept of being free of physical barries i.e. walls.

Well, let's see how this proceeds.