Bank Threatens Reporter Over Trademark For Using The Term 'Virtual Wallet'

from the virtual-wallet,-virtual-wallet dept

Mon, Feb 18th 2013 12:03pm — Mike Masnick

We've written many times in the past about how, thanks to the ridiculous sense of "ownership society" that is often presented to the world around copyright, patents and trademarks, it's unfortunately common to see massive overclaiming of certain rights. That's especially true of trademarks, which really shouldn't be lumped in with patents and copyrights, since they're very very different. Trademarks, as we've noted before, are really about avoiding consumer confusion, so they don't buy one product trusting that it's another product. It is not about "ownership" in any sense. And yet so many companies (and individuals) think that if they get a trademark on a word or phrase, they can basically stop anyone else from ever using it.

The latest example of trademark overreach comes from PNC Bank, who threatened a reporter at the San Francisco Chronicle for having the gall to use the phrase "virtual wallet" in an article. PNC sent a legal nastygram, telling the SF Chronicle that it must "refrain from misuse of our client's VIRTUAL WALLET trademark." Except, of course, that's hogwash. Nothing in trademark law could possibly make that true, and the Chronicle's James Temple responded appropriately:

To which I say: virtual wallet, virtual wallet, virtual wallet, virtual wallet.

Furthermore, he notes that the trademark itself is almost certainly invalid, as the phrase was in widespread common usage for many years before 2008 when the bank sought the trademark (and, ridiculously, the USPTO granted it).

In late 1994, Newsweek published an article titled "The Age of Cybercash" that informed readers: "Your virtual wallet may soon be here."

By the end of 2007, the term "virtual wallet" had appeared more than 700 times in the English press, including in American Banker, the Economist, the New York Times and Consumer Reports.

Nevertheless, the following year, PNC Financial Services Group launched a "Virtual Wallet" product. It sought trademark protection, asking to own the commercial rights to two consecutive words that had been pushed together by the press and industry more than a decade earlier.

Temple goes on to call out others who have sought to abuse trademark law to "homestead" the English language -- including our favorite trademark troll ever, Leo Stoller, who "trademarked" all kinds of words including "stealth," "all goods and services," "chutzpah," and (oh yeah) "Google" which he claimed to have been using since 1981.

As Temple notes, PNC is trying to avoid having the phrase "virtual wallet" be declared generic such that their registered trademark can be eliminated, but if they didn't want that to happen, they probably shouldn't have gone with such an already generic and descriptive phrase.

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Filed Under: descriptive, generic, homesteading speech, reporting, trademark, virtual wallet
Companies: pnc bank, sf chronicle

27 Comments

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Anonymous Coward, 18 Feb 2013 @ 12:30pm

after the amount of shit the banks have caused worldwide, mainly thanks to those in the USA, i would have thought that they would have kept quiet over such a ridiculous thing and kept a low profile in general. like the entertainment industries, the old 'thick skin' (or should it be just thick?) doesn't even crinkle when wet, let alone when making pricks of themselves!
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Anonymous Coward, 18 Feb 2013 @ 1:03pm

"Furthermore, he notes that the trademark itself is almost certainly invalid, as the phrase was in widespread common usage for many years before 2008 when the bank sought the trademark (and, ridiculously, the USPTO granted it)."

The word Apple was in widespread common usage for many years before Apple trademark it.
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wallow-T, 18 Feb 2013 @ 1:28pm

The word "windows" ?? Seems like it was in common use for computer display elements.
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Anonymous Coward, 18 Feb 2013 @ 1:31pm

This is good news for my Cyber Coffer business.
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The Mighty Buzzard (profile), 18 Feb 2013 @ 1:37pm

Re:
Not referring to computers, it hadn't. That's a crucial bit of factage there.
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The Banking Industry, 18 Feb 2013 @ 1:41pm

Virtual Robbery
Virtual wallets so we can virtually rob you.

Wait. Nah.. we're just gonna rob you!
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The Mighty Buzzard (profile), 18 Feb 2013 @ 1:41pm

Re:
When Microsoft started using it? Not so much. It did get ruled generic later though which is why everything is either Microsoft Windows or just Microsoft now.
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Richard (profile), 18 Feb 2013 @ 1:44pm

Re:
The word Apple was in widespread common usage for many years before Apple trademark it.

Yes - but that trademark was for a different and very specific use of the word. You can still use the word Apple to describe anything that you might have described as an apple before 1975 - (including the Beatles music company). The point here is that PNC are trying to claim trademark on a usage of the term that predates their own usage - you can't do that.
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That Anonymous Coward (profile), 18 Feb 2013 @ 5:23pm

IP... making lawyers rich, extracting cash from everyone, making the product worse, and wasting a buncha time.

What a crock of...
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Anonymous Coward, 18 Feb 2013 @ 6:04pm

PNC is trying to avoid having the phrase "virtual wallet" be declared generic such that their registered trademark can be eliminated,

Why? Why are they fighting so hard to keep a generic term from being recognized as generic? So they can keep being humiliated in the press? So they can throw more money away on legal efforts to try to keep people from using basic online terminology? Why?
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F!, 18 Feb 2013 @ 7:15pm

two words
Virtual wallet.
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Anonymous Coward, 18 Feb 2013 @ 7:34pm

Re: Re:
Yes - but that trademark was for a different and very specific use of the word. You can still use the word Apple to describe anything that you might have described as an apple before 1975 - (including the Beatles music company). The point here is that PNC are trying to claim trademark on a usage of the term that predates their own usage - you can't do that.

It strikes me as having been merely descriptive, not generic. It became registrable when it acquired secondary meaning.
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F!, 18 Feb 2013 @ 7:44pm

Re:
"The word Apple was in widespread common usage for many years before Apple trademark it."

I still facepalm whenever I think about how Apple Computers signed a deal with Apple Records saying that as long as they (Apple Computers) would stay out of the music business, they could each keep their respective names.

Apple Computers later violated the agreement when they introduced iTunes, and then they turned around and sued Apple Records - and WON. WTF was that judge thinking!? That was just wrong on so many levels...
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That Anonymous Coward (profile), 18 Feb 2013 @ 8:18pm

Re:
Because they paid a bunch of money to get the trademark in the first place.
It would call into question why the bank and its lawyers would ignore the obvious problems and spend money to do this.
Also it would allow them to keep any other bank from offering a "Virtual Wallet" so they could be unique and own the whole idea.
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timmaguire42 (profile), 18 Feb 2013 @ 8:22pm

The problem in this case is that it wan't being used in commerce, but PNC's bigger problem, as you point out right at the end, is that it's descriptive. This term should be (and if challenged, probably will be found) untrademarkable.
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G Thompson (profile), 18 Feb 2013 @ 9:27pm

Re: Re: Re:
In the Aussie vernacular - She'll be apples mate!

I even think you American's have a similar saying to do with Apple's..

ie: Context of trademarked phrases/words is EVERYTHING!
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G Thompson (profile), 18 Feb 2013 @ 9:29pm

Re: Re:
Yep became so ubiquitous that it became generic.. Worst thing to happen to any trademark

Prime examples of this is what happened to Xerox and Kleenex.
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Sheriff Fatman, 18 Feb 2013 @ 9:38pm

Re: Re:
1973 - first desktop/window GUI (Xerox Alto).
1980 - term "WIMP" (Windows, Icon, Menus, Pointer) coined
1983 - Apple Lisa
1984 - X Windows System
1985 - Microsoft Windows 1.0.
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PaulT (profile), 19 Feb 2013 @ 12:48am

Reminds me of Games Workshops' battles over "space marine". Why they couldn't foresee this is ridiculous. Yeah, you have a feature that acts like a wallet, only virtually, or you have combat forces who act like marines, only in space. Why should the combination of the most obvious words to describe your product be able to be trademarked?

Here's a hint to companies: if you trademark something that's a logical descriptor for the type of thing you're selling, it will be inadvertently infringed upon and you'll look like assholes for defending it, especially since such descriptors will almost certainly predate your own use. Either invent a non-obvious descriptor, or accept that others will always use it.

Another example of what happens when you let lawyers run your company, I suppose.
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RyanNerd (profile), 19 Feb 2013 @ 5:44am

Re:
In the novel I am writing I use the phrase:
The Space Marine used his Virtual Wallet.
Can I be sued now?
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Ninja (profile), 19 Feb 2013 @ 5:55am

Re: Re:
According to Teri Buhl she could sue you for that. Haven't you got any journo ethics you bastard?
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Vincent Clement (profile), 19 Feb 2013 @ 6:07am

Re: Re: Re:
Except that the potential 'loss' from having your trademark become generic has been overstated. No other photocopier manufacturer uses Xerox and no other tissue manufacturer uses Kleenex.
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Vincent Clement (profile), 19 Feb 2013 @ 6:09am

Re:
Microsoft didn't trademark the word Windows. It did get a trademark on a stylized version of the word "Windows" and a trademark on "Microsoft Windows".
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Vincent Clement (profile), 19 Feb 2013 @ 6:43am

Re: Re:
It's unlikely that another bank would use the term "Virtual Wallet" because that term is already associated with PNC. Companies tend to overvalue their trademarks. Is it a bad thing for Kimberly-Clark when people use the term Kleenex instead of tissue?
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Anonymous Coward, 20 Feb 2013 @ 10:53am

Re: Re:
Agreed, which is what I think the prior AC was trying to point out.
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Anonymous Coward, 20 Feb 2013 @ 11:08am

Re: Re: Re: Re:
That's because the original trademark registration for the XEROX mark is still valid and subsisting.

Although the original registration for KLEENEX used with tissue has lapsed, it wasn't due to any genericness holding (at least not at the PTO).

To paraphrase Mark Twain, the reports of these brands' death by genericide are greatly exaggerated.

In contrast, competing companies use actual generic terms that used to be trademarks all the time (e.g., aspirin, zipper).
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Anonymous Coward, 20 Feb 2013 @ 11:11am

Re:
Descriptiveness does not prevent trademark protection.
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