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Intel Corp. Sues Mexican News Outlet (For Publishing "Intel")
Research Staff, Chilling Effects Clearinghouse, November 19, 2009
Abstract: Another hat tip to Techdirt for bringing our attention to Intel Corp.'s recently filed suit against the publishers of Mexico Watch, a digital newsletter whose URL is latinintel.com, and whose parent company does business as Americas News Intel Publishing.
Intel Corp. has alleged both confusion-based infringement and trademark dilution against the company, although its website is clearly branded in ways that would easily distinguish it from the computer chip maker and its use of the word "intel" to mean "intelligence" is in common use.
"This is a time when we need good intel, but we're not getting it."
Intel Corporation has filed a trademark infringement suit against Americas News Intel Publishing in the Northern District Court of California. The publishing company clearly describes its Mexico Watch newsletter as an "intelligence service on business, politics, and economy." In that context, as Michael Masnick notes above, the possibility of consumer confusion between their business and Intel Corp.'s seems unlikely. Ordinary trademark infringement is based on consumer confusion and generally if two businesses are unrelated enough (and their uses of a similar trademark are different enough), then no infringement will be found. For instance, we can all deal with a computer company called "Apple" and the Beatles' use of "Apple Records" without collapsing into a steaming heap of befuddlement.
United States federal trademark law does provide another kind of protection for trademark owners whose marks are qualified as legally "famous," however: protection against trademark "dilution," which does not require any consumer confusion. The Trademark Dilution Revision Act of 2006 (15 U.S.C. section 1125(c)) defines two kinds of "dilution": tarnishment, where the similarity between a famous mark and another use of the mark harms the reputation of the famous mark, and blurring, where a use of a mark "impairs the distinctiveness of the mark." (For more on dilution see Apple Steps up to Podium with TM Claims.)
Intel's correspondence with Americas News Intel Publishing, posted here, alleges that latinintel.com blurs the distinctiveness of their mark.
Americas News Intel Publishing hired a lawyer, who sent the following response, also published on their home page. We think it's worth quoting at length:
More importantly, the word 'intel' as used in the intelligence and information services sectors may not be trademarked. The word intel is an abbreviation for intelligence in the English language, and can be found in dictionaries of record such as the Oxford English Dictionary and Merriam-Webster's Collegiate Dictionary. And the use of the word intel as an abbreviation for intelligence is common in public discourse. . . . No sum of money spent to secure the public identification of the word 'intel' with products produced by Intel Corporation can withdraw the word, as it is used in standard English, from the public domain.
The argument made there, that words used descriptively or generically to describe a product may not be trademarked in that product's sector, is a valid one. For instance, if I owned some kind of "apple" trademark, I couldn't keep sellers of that round red or green fruit from using the word "apple"or consumers really would get confused!
We think the Oxford English Dictionary gives pretty reliable intel, but nonetheless, the point may be moot: the Mexico Watch newsletter has already ceased publication and Americas News Intel Publishing, now facing a lawsuit from Intel, describes its own future as uncertain.
Update - 2/11