* Using the phrase 'identity as a service (IaaS)' legally
Last week I used the phrase “identity as a service (IaaS)” in the newsletter (“The On Demand Identity Company”). I’ve used the phrase before because it describes what identity with a service-oriented architecture (SOA) is – a service, in the network, providing identity data and management. As a phrase, it’s been used for a few years – almost since the day “software as a service” was first coined. It hasn’t been controversial until now.
After the newsletter was published, I got a note from Dennis McDermott, the Chief Marketing Officer of Fischer International Identity, LLC. Dennis wished to point out to me that Identity as a Service™ and IaaS™ were actually trademarks of Fischer. And I’d used them with the little “™” sign! Now it is true that if you don’t defend your trademark you can lose it – just ask the former trademark holders of aspirin, thermos and cellophane. But a little digging shows there is more the story than that.
According to Harvard Law School’s “Overview of Trademark Law”, the mark must fall into one of four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.
• Arbitrary marks (e.g., “Exxon” or “Kodak”) bear no inherent relationship to their underlying products.
• Suggestive marks evoke or suggest a characteristic of the underlying good. For example, the word “Coppertone” is suggestive of sun-tan lotion, but does not specifically describe the underlying product.
• Descriptive marks directly describe, rather than suggest, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). For example, “Holiday Inn,” “All Bran,” and “Vision Center” all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services).
• Generic marks describe the general category to which the underlying products belong. For example, the term “Computer” is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law.
“Identity as a service” would seem to fall in the third, or descriptive mark, category.
The Harvard Law article goes on to say: “Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired ‘secondary meaning.’ Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. Thus, for example, the term ‘Holiday Inn’ has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. The public need not be able to identify the specific producer; only that the product or service comes from a single producer. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term’s use; (4) results of consumer surveys.”
Does that mean that the original meaning is no longer able to be used? No, says Harvard Law: “Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of ‘all bran,’ without infringing upon Kelloggs’ rights in the mark ‘All Bran.’ Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant’s use of ‘fish fry’ to describe a batter coating for fish was fair use and did not infringe upon the plaintiff’s mark ‘Fish-Fri’.”
With Harvard Law on my side, I’ll continue to talk about SOA based identity services as “identity as a service,” which does not invoke any secondary meaning nor lead to any confusion on the reader’s part. Of course, your thoughts are always welcome.
