Palm Changes Mind on Trademark Crackdown

According to PalmStation, Palm Inc. has decided to not pursue websites that have "Palm" in their domain name or URL. There has not yet been an official statement from Palm on this change.

Recently, Palm had been requiring enthusiast sites to either sign a licencing agreement and change "Palm" to "PalmOS", or remove the word entirely. This policy has generated a great deal of bad press for the company.

Most of the well-known Palm-related websites received letters from Palm offering a free licence to use "Palm OS" in their domain names but insisting that they comply with Palm's rules. This resulted in several of them removing "Palm" from their name and taking the opportunity to broaden their focus to include the rival Pocket PC OS.

The Palm Infocenter was contacted late last year about changing the name and initially was not given the option of using the word "Palm". Only recently was the site offered a free licence to use that word.

Hal Schechner from PalmStation said, "This is definitely a good thing to see from Palm. Let's hope that this is just the start of a new relationship between Palm and the Palm community."

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Websites Win a Hollow Victory

IPLawyer @ 9/22/2001 11:42:25 AM #
Palm's letter to websites was based on sound legal advice. Allowing the use of the PALM name by others without license endangers Palm's ability to prevent other handheld makers from using the name. Would you like to see MicroSoft using "Palm"? How about an IPAQ Palm? That is exactly what Palm is trying to prevent. Yes, they do have to police unauthorized uses of PALM to maintain their trademark rights. Familiar with the term THERMOS? It was originally a trademark, of the strongest ("arbitrary") sort. Now, the original maker of THERMOS products (Aladin) can't stop anyone, even its direct competitors, from calling their products "thermos." Johnson & Johnson fights the same battle with BAND-AID (notice, they always call it "BAND-AID brand" now, and are very picky about others' use). KLEENEX is very sensitive. XEROX and ROLLERBLADE are in the same boat. Palm is simply trying to keep its name from becoming what we trademark attorneys call "generic." If you care about Palm's ability to market, to distinguish its products, and to leverage its great history, you'd think a second and give Palm a break. Great, PalmStation and all the others may have won a great victory over "Palm's trademark police." Trust me, Palm didn't pay the lawyers to police the trademark out of mere joy for attorneys' fees; it was a necessity. In the end, various "palm" sites may also have opened the door for Palms competitors to compete unfairly with Palm by using Palm's name. Congratulations.

RE: Websites Win a Hollow Victory
Kaitou @ 9/22/2001 11:51:46 AM #
Then they should have allowed websites to instead lisence "Palm" for their fan use, instead of attempting to force them to change the names that these hardworking people have built up. They do the work supporting the fan and developer base of the Palm and Palm OS products. I own several domains myself, sites which are moderately popular, and have taken work to build up, I can say that if I were to be served such a notice, I would rather pull out and change the focus of my sites.

I also wouldn't blame sites which support the product for any future downfal, as you are attempting to. It's not that hard for Palm to create a free lisence for "sites offrering information and support to the Palm and Palm OS community" which would not extend to creation of devices or operating systems.

RE: Websites Win a Hollow Victory
I.M. Anonymous @ 9/22/2001 12:23:29 PM #
>> Would you like to see MicroSoft using "Palm"?

Didn't Palm already win a fight with Microsoft over this? If I remember correctly, one of the first generations of WinCE was called Palmtops by Microsoft and Palm sued to make them change it to something else. Sorry I can't remember all the details.

RE: Websites Win a Hollow Victory
slot_machine @ 9/22/2001 3:39:25 PM #
Your argument with the other brand names is false. Thermos, Band-aid, Keenex, etc. Have every right, and do enforce their trademarks against manufacturers of similar products. On the other hand they benefit from their brand names being substituted for the type of product name in the publics mind. "Do you have a Coke?" Everybody thinks "band-aid" when they want a self-adhesive bandage. This is the ultimate victory in product marketing. This is what Palm should want.

RE: Websites Win a Hollow Victory
Islander @ 9/22/2001 10:30:58 PM #
You are a lawyer?
How does "fan sites" use cause this?

If they allowed the competition to use their name over the course of years, I could see your point. This is why they needed to stop Microsoft from using the term "Palm sized." If all PDA companies were allowed to use Palm to describe their devices your point would be correct.

To make my point lets talk about another kind of "Fan site." Look at music. There must be a zillion "Backstreet Boys" fan sites right. Now if I try to get five talentless pretty girls together and call them "Backstreet Babes" could I do this? As my "counsel" would you recommend I do this? Has the record label or whoever owns the name lost ownership of the name "Backstreet" because some 16 yeart old kid in Iowa has a "" website? What about 50 or more such websites.

Now If I did create a Backstreet babes, Someone else creates Backstreet Bros, next thing you know there are 10 different Backstreet groups. The record company ignores this. At some point "Backstreet" becomes generic for any young pop group. THEN it is possible that all rights to the term are lost to the original owner.

But fan sites use alone cannot cause this. "You may say "You are no lawyer" which is correct.

But Counselor why dont you and I put together the "BackstreetBabes" and see what happens. Lawyers will descend upon us like vultures to a kill.
You and I both know that despite numerous fan sites we cannot use the term "Backstreet" for a music group.
The rights to the name are secure.

THe same goes for the name "Palm."

RE: Websites Win a Hollow Victory
I.M. Anonymous @ 9/24/2001 9:47:47 AM #
Just to ad my two cents...
If Palm wanted a unique name to identify their company they should not have picked so common a word as palm. The palm has been the palm for thousands of years and will be a plam long after Palm, Inc. is gone.

What am I to call the center part of my hand? Can I no longer palm a basketball or $50 bill? Will dieters still be able to have a palm-sized helping of protient? If I went to Hawaii would I not be able to see palm trees? Does Rosie need to change her last name? And what about her five sisters?

Palm created this mess by choosing such an already generic term to brand their product. They chose the name, they even chose to shorten it from Palm Pilot (very unique) to just Palm (very obtuse). Sorry Palm generic is as generic does.

RE: Websites Win a Hollow Victory
I.M. Anonymous @ 9/24/2001 2:15:49 PM #
Wasn't Palm forced to changed the name from Palm Pilot by the Pilot Pen company and their trademark on the name "Pilot"?

RE: Websites Win a Hollow Victory
PhilM @ 9/24/2001 10:46:35 PM #
About the Pilot Pen thing, that is quite correct, though I do believe this was a mistake for Pilot pen. Instead of this, they should have gone for cross marketing w/ Palm. However, that's off-topic.


RE: Websites Win a Hollow Victory
AC1 @ 9/28/2001 5:48:25 AM #
Phil, you're exactly right. Palm and Pilot Pen were too short-sighted and foolish not to strike a deal....Pilot could have provided the styluses for Palm.


Davy @ 9/22/2001 11:44:32 AM #
They managed to get several palm websites to change their focus to PocketPC's, and annoy many others.... Now they're stopping. What the heck is their problem? Does the bad press they're getting bother them enough to stop? Sheesh, well I'm personally glad Palminfocenter stuck to it's guns till Palm retreated. Keep up the good work.


RE: Hmmm.....
skoty @ 9/22/2001 12:33:17 PM #
I agree, PalmInfoCenter has been my source of Palm information for several months now. Don't change a thing, especially not the name.

By the way, is there any word whether Handspring is planning to go after Visor central for the same issue. Hopefully they'll learn from Palm's mistake.

RE: Hmmm.....
I.M. Anonymous @ 9/22/2001 4:30:59 PM #
I would prefer the name PalmManagementSucksInfocenter, myself. Sounds like in these competitive times, Palm is a little top-heavy with management to be worried by this crap, and to alienate an already shrinking customer base. I HAD Palms. Now I have a Clie, Visor and IPAQ.

The word "loyalty" and "consumer" should never be mentioned in the same sentence. No company will ever be deserving of it, just because of their very nature as a profit-making entity. Decisions will always come down on the side of "what's good for them" not "what's good for the customer" unless it is ALSO good for them, at that time and place. Just ask the Newton folks! Deep Throat said it best-- "follow the money".

RE: Hmmm.....
I.M. Anonymous @ 9/22/2001 11:08:13 PM #
This just continues to show how bad Palm's management decision makers are, as well as how arragant americans are; "Palm" is an ordinary English word, and just because Palm uses it as their trademark, does that mean they started owning it? Either their laws need fixed, or Palm needs new managers.

It stinks every day a little bit more
I.M. Anonymous @ 9/23/2001 7:51:25 AM #
The decision was a complete stupid one - it costs Palm a lot of dedicated followers.
Another sound argument to sack the managers known for driving Palm in the ground at once. NOW!
If Palm does not turn around today – the ship has gone tomorrow.
The fish stinks from the head.
Every day more.

Well lets hope it's not to late.

I.M. Anonymous @ 9/22/2001 11:46:08 AM #
I am a college student who just bought my first PDA a SOny Clie 320. I love it. Simple, small, and cheap. I am now a supporter of the PALM OS all the way. Letting the fanboys out there use the PALM name is a good thing. Never piss off fans. Lucasarts tried the same thing awhile back and there are people on the internet still mad.

Oh and before anyone says it, yes I have tried a PocketPC. It's heavy, larger and costs nearly 3 times as much. Forget that. and

I.M. Anonymous @ 9/22/2001 3:24:40 PM #
Now websites like and can exist. I guess you have to take the good and the bad.

A journalistic issue and a trademark issue

Moosecat @ 9/22/2001 4:17:12 PM #
1. Did Palminfocenter receive one of these letters? If so, that really ought to be stated in an article that expresses opinions (albeit of others) about the wisdom of such letters. A cease-and-desist letter has some legal effect and if you're going to write about them, you should 'fess up to having received one (if you have).

2. As for the trademark issue, as an attorney who occasionally litigates trademark claims, I agree that the cease-and-desist letter rests on sound legal footing. Trademark protects against consumer confusion; Palm has an interest in preventing consumer confusion about whether people think Joe Blow's Palm Site is financed, sponsored, or endorsed by the company.

But that interest is quite different from Palm's interest in avoiding PRODUCT confusion (ie, confusion that might result from Microsoft naming a PDA a "Palmtop") -- also a kind of consumer confusion protected by trademark law. While trademark law is a powerful tool in both situations, it seems unwise as a business matter to wield it in the first situation.

They wised up and didn't push the issue as to sponsorship confusion of web sites. Because that kind of confusion is so different from product confusion, though, Palm has certainly not waived any argument that Microsoft cannot call its product a "Palmtop" or something similar.

RE: The journalistic issue
Ed @ 9/22/2001 4:40:16 PM #
Our involvement with this has been talked about elsewhere but you make a good point that I should mention it here, too. I edited the article to include it.

News Editor
RE: A journalistic issue and a trademark issue
mj6798 @ 9/22/2001 4:58:11 PM #
As for the trademark issue, as an attorney who occasionally litigates trademark claims, I agree that the cease-and-desist letter rests on sound legal footing. Trademark protects against consumer confusion; Palm has an interest in preventing consumer confusion about whether people think Joe Blow's Palm Site is financed, sponsored, or endorsed by the company.

There is a disturbing legal trend to interpret trademarks as not just referring to a product but to refer to sponsorship. This was not the intent of trademarks. Trademarks were intended to identify products clearly and uniquely, and the product in this case is the hardware and software produced by Palm Inc.

In any case, a simple disclaimer of "This site is not sponsored, financed, or endorsed by Palm Inc." should be sufficient to clear up any confusion even the most naive consumer might have.

RE: A journalistic issue and a trademark issue
IPLawyer @ 9/22/2001 6:06:27 PM #
The "disturbing legal trend" is statutory. Trademark infringement occurs when the public is confused as to source, affiliation, or sponsorship. That's federal law (Lanham Act, Title 15, US Code). Competitive products are not the key. Similarity of market is significant, but direct competition is not essential. Palm was trying to be a good business steward and protect the distinctive nature of its mark. Allowing a mark to become descriptive or generic is the death knell of trademarks. Watch almost any thread about a Palm product, and you'll see numerous posts about IPAQ, Sony, etc. Palm is/was simply trying to make sure the PALM trademark did not become provably descriptive. As for blanket licensing without controls, such activities are called "naked licensing." The law sees through them pretty easily.

RE: A journalistic issue and a trademark issue
I.M. Anonymous @ 9/22/2001 7:43:19 PM #
well, whatever that is, Palm's action sure doesn't look like they are trying to "protect and cultivate" their community.

More like thinking their own ass. Even if it is the law, it can be expressed and resolved more elegantly instead of dropping threat left and right.

RE: A journalistic issue and a trademark issue
mj6798 @ 9/22/2001 10:49:12 PM #
The "disturbing legal trend" is statutory. Trademark infringement occurs when the public is confused as to source, affiliation, or sponsorship.

Sorry, I didn't put this very clearly. The disturbing trend I see is that just about any mention of a trademark seems to be considered almost automatically as presenting a risk of confusing consumers about "sponsorship". But how could (a hypothetical) "" be misinterpreted as being sponsored? That kind of use of the term "Palm" correctly identifies the product. And why doesn't a simple disclaimer on each page saying "This site is neither sponsored by, nor affiliated with, Palm Inc." suffice? And none of this has anything to do with trademark dilution: something like "" doesn't dilute the trademark, it correctly identifies the product it criticizes.

The intent of trademark law was clearly that Kodak shouldn't be able to sell their copy machines under the Xerox brand name, and that Xerox shouldn't be able to sell HP toner cartridges giving the false appearance that this was endorsed by HP, not more and not less.

The simple fact is that companies are increasingly trying to use these marginal areas in trademark law to control speech about their product, irrespective of whether the trademarks are used accurately. Neither consumers should have no patience with that kind of legal maneuvering. Good going for the Palm-related sites that changed their name to "Pocket-something". Maybe it will teach bullies like Palm a lesson.

RE: A journalistic issue and a trademark issue
Islander @ 9/23/2001 10:40:50 PM #
I fail to see how the scenario you describe happens as a result of the word Palm being in a website title.

You said:
"Allowing a mark to become descriptive or generic is the death knell of trademarks. Watch almost any thread about a Palm product, and you'll see numerous posts about IPAQ, Sony, etc. Palm is/was simply trying to make sure the PALM trademark did not become provably descriptive."

Palm has already been near this territory. Look at the reference in the Charlies Angels movie to a PPC as a "PalmPilot." This has long been common among novices.
True Ipaqs, and Sonys, are to be found in the same threads on Palm fan sites. But never do I see the term Palm used generically(sp)to describe all PDAs on these sites. If anything such sites emphasize that these are DIFFERENT products. These sites contribute to the awareness of Palm, Palm OS licenced devices, and all other PDAs, as well as their differences.
The very nature of Palms licensing arrangement leads to greater confusion.

Let me be clear I am not arguing Palms legal right to protect their name. What I am saying is that fan sites do not threaten their name as you imply. Thus pursuing such fan sites appear heavy handed, and are simply unnessesary.

In reply to your earlier post I used the example of music fan sites. Now I will speak of "Star Trek" fan sites. Your argument would lead one to believe that unless Paramount enforces their legal right to stop any website from using star trek in a URL they could lose the exclusive right to the name. Could they ban every site with Star trek, klingon, vulcan, enterprise, voyager, deep space nine, ect. Sure it is their right. But would that be wise? Could I find Battlestar Galactica in a search of star trek threads? Sure. But you and I cannot as much as sell a T-Shirt with the word "Star trek." The name is protected.

Fan sites create loyalty and a rabid fanaticism among fans. This is GOOD for buisness. That is why smart buisnesses ignore these andeven support their existence.

Microsoft is dying to have the fanatical loyaly that these sites help to promote.
People running such Palm sites are practicly being BRIBED by Microsoft to promote their products. They are flown to Redmond, GIVEN PPCs wined and dined. The advantages of PPCs are drummed into them. Then to have Palm show them such disrespect.

This was not a legal nessesity.
This was stupid buisness.

RE: A journalistic issue and a trademark issue
I.M. Anonymous @ 9/24/2001 2:37:27 PM #
After this "Icelander" post what can one say except: I agree 100%
There is all said, nothing left out – that’s the way it is!
Boris Michael v. Luhovoy
Publishing editor
Palmtop-pro Magazine



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