The dispute between IBM and a small, N.C., software company over the use of the eServer name cuts to the heart of trademark law.

Last week, Technauts of Cary, N.C, told IBM it objected to their use of the eServer moniker as the umbrella name for its rebranded server lines. For about three years, Technauts has marketed, promoted and sold its eServer brand of software solutions. The company works with such industry heavyweights as Sun Microsystems and Hitachi.

Big Blue counters that eServer is not exactly the name of their new family but it's really a symbol - an "e" with a circle around it - plus server. IBM has used the symbol for over three years in other campaigns.

About two years ago, Technauts tried to register "eServer" for a US trademark but the U.S. Patent and Trademark Office rejected the request because the term was too general. In fact, Technauts does not have the only "eServer." A nonprofit EServer Web site, dating back to 1990, offers a place for scholars, readers, artists and writers gather to discuss their work. There is also an application service provider, eSERVER, Inc., of San Diego, Calif.

So who has dibs on the name? Is the way IBM spells it a technicality to get around Technauts' claim? Does Technauts have a trademark claim for the name since it began using it three years ago? Might there be other eServers other there who also have valid claims to the name?

Actually, none of these questions really matter since eServer is such a generic term that it can't be trademarked, said Thomas Field, an intellectual property attorney with Wolf, Greenfield & Sacks, a Boston, Mass.-based law firm. While copyrights protect expression and patents protect ideas, trademarks exist to help consumers by telling them who is behind the products they purchase, Field explained.

For example, a fruit merchant can't call his specific brand of oranges as Oranges and expect to qualify for a trademark, Field said. Obviously, the public would certainly confuse his product with the many other citrus sources. "However, a company can use Apple for computers because it is arbitrary and makes for a strong trademark."

As a rule of thumb, the strengths of trademarks can be seen on a continuum. The strongest trademarks are arbitrary such as using Apple for a computer company or fanciful such as made-up names like Kodak, Field said. Such marks are so strong since the likelihood the consumers confusing them are very low.

By contrast, the weakest are generic terms related to the industry. Generally, Field said he tries to dissuade clients from using a name closely related to their industry. Aligning your product name with the industry may initially bring in more business but ultimately it can lead to confusion, he said.

Companies do have another option besides a total or word mark, which protects all ways a name is spelt. Script marks, by contrast, protect a special spelling or design of a name. An example of this is McDonald's Golden Arches, Field said.

Companies can become victims of their own success. Sewing machine maker Singer lost its trademark around the turn of the century. "People used to say I just bought a new Singer though it was made by a different company," Field said.

For more information on:

IBM’s eServer line, visit this site: www.ibm.com

Technauts software line, visit this site: www.technauts.com

Trademark law, visit this site: www.trademarks.com