This points to a fundamental problem in the field though - legal departments are off chasing trademark, copyright (etc) problems down without regards to business issues. In the process, they are giving black eyes to their firms. Sounds to me like it's time for the marketing departments to start exercising oversight...
The myth, of course, is that the lawyers have to protect their trademarks against any use by third-parties, because otherwise they lose the mark. You hear this brought up by commentators as a defense against every bogus trademark claim. You can't blame them because they have to do it. The law forces them to be a load of wankers. It's a very convenient myth, and I suspect it's quite a lucrative one that the lawyers don't really put much effort into dispelling.
The simple fact is, the law concerning how trademarks can be protected is pretty narrow. More often than not, the trademark disputes that make it far enough into the public arena to attract the “they had to do it” defence are precisely the ones that shouldn't have been defended.
(I am, of course, not a lawyer. I'm certainly not an American lawyer. This essay is based entirely on research I performed online.)
There are two (related) things you need to protect a trademark against. The first is infringement. The reason we have trademarks in the first place is so that consumers can identify products. If consumers develop a certain trust for Frobnitz™ brand baked beans, then allowing just anyone to slap that label on a tin of beans is bad for consumers.
The second is dilution. Some marks are misused so that they end up referring to something generic instead of a particular product. When I grew up (in England), we didn't vacuum the carpets, we hoovered them, regardless of the brand of vacuum cleaner we were in fact using. Closer to the net, "photoshop" and "google" seem to have entered the language as generic verbs for digitally altering photographs and searching respectively.
Take note that even after hoover became a generic term, Hoover™ were still the only company allowed to sell Hoover™ brand hoovers. Dilution doesn't kill a trademark entirely, it only limits the circumstances in which you can control its use.
It's easy to fall into the trap of thinking that any use of a trademark must fall into one of these two camps, but the courts think differently. Take, for example, the Beanie Babies case. Ty Inc., the makers of (trademarked) Beanie Babies sued a publishing company that was producing a “Beanie Babies Collectors Guide” Clearly, here's a company using a trademark that they do not have permission to use. However, they're using it to describe precisely the product that the trademark was protecting.
There are Fair Use rights with respect to trademarks. One of these rights protects complementary products. If you make something that complements a trademarked product, such as a collectors' guide for Beanie Babies, then there is really no way to promote your product without using the trademark. This is the law that allows sites like Javalobby and JavaBlogs to exist: both sites are complementary to (about) Java. They use the mark correctly – to describe Sun's trademarked platform – without competing with it, and both sites make sure they explicitly state they are not endorsed by the trademark holder.
A trademark also doesn't protect you against embarrassment by association. The Victoria's Secret case is quite enlightening here. An adult video store in New Jersey decided to call itself “Victor's Secret”, a name they changed to “Victor's Little Secret” after a Cease and Desist from the famous lingerie brand. (This is very similar to the MikeRoweSoft, brouhaha from earlier this year, except Mike Rowe settled for an X-Box and never went to court)
In the Victoria's Secret case, the U.S. Supreme Court decided that despite the fact that Victor's Little Secret deliberately invoked the Victoria's Secret trademark, and caused people to make a mental association between the two products, no reasonable person would assume that there was a real relationship between the two companies. This meant Victor wasn't diluting or tarnishing the original mark, he was just making a joke that everyone but Victoria's Secret got.
Even if you can demonstrate dilution, it's not entirely clear whether it's worth defending against. The value of a brand is questionable to say the least, with consumers seeming to be increasingly fickle in their brand loyalty. But language moves slower, and has much greater lock-in than consumer preference. Competition in the search marketplace is hotting up, but only Google is a verb that permeates out of nerd culture into pop culture. Surely they should welcome being in the dictionary, instead of fighting it?
