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Summary of
America Online v. AT&T
("You've Got Mail" Trademark Case)

America Online, Inc. v. AT&T Corporation, U.S. District Court, Eastern District of Virginia, Case No. 98-1821-A.

Nature of the Case. Both AOL and AT&T provide Internet access, including e-mail services, to their customers. AOL has been using, for varying lengths of time, the words "YOU HAVE MAIL", "YOU'VE GOT MAIL", "BUDDY LIST", and "I M", as well as the mailbox logo. In December of 1998, AT&T began using these same words and logo in connection with its e-mail service. AOL was upset, and filed suit in federal court alleging various trademark and unfair trade competition claims.

Plaintiff. Online service provider America Online, Inc.

Defendant. Telecommunications giant AT&T Corporation, which provides, among other things, the AT&T WorldNet Service.

Summary. AOL's Amended Complaint lists seven counts:

(1) Federal Trademark Dilution under 15 § U.S.C. 1125(c) (YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL).
(2) Federal Trademark Dilution under 15 U.S.C. § 1125(c) (IM and BUDDY LISTŪ).
(3) Trademark Infringement under 15 U.S.C. §1114 (BUDDY LISTŪ).
(4) Unfair Competition and False Designation of Origin under 15 U.S.C. §1125(a) (You Have Mail!).
(5) Unfair Competition and False Designation of Origin under 15 U.S.C. §1125(a) (I M Here and Buddy List).
(6) Unfair Competition and False Designation of Origin under 15 U.S.C. § 1125(a) (Overall impression).
(7) Interference with Prospective Economic Advantage.

AT&T denied that AOL is entitled to any relief, and counterclaimed for a declaratory judgment. AT&T requested the Court to declare that YOU HAVE MAIL, YOU'VE GOT MAIL, IM, BUDDY LISTŪ, and the mailbox drawing are generic, and hence not protected trademarks. Also, AT&T asked that the Court declare that AT&T's use of the marks does not create the overall impression that protected marks are being violated.

Status. Suit was filed in late December, 1999. AOL sought, but was denied, an emergency temporary restraining order. On August 13, 1999, Judge Hilton granted AT&T's motion for summary judgment, ruling that YOU HAVE MAIL, IM, and BUDDY LIST are generic, and that AOL's trademark registration for BUDDY LIST is cancelled. AOL has appealed the ruling.

Chronology with Links to Pleadings and other Documents

  • 12/22/98. AOL filed its original Complaint, Motion for Temporary Restraining Order, and supporting pleadings.
  • 12/24/99. AOL's Motion for TRO denied.
  • 1/11/99. AT&T filed its Answer and Counterclaim.
  • 1/19/99. AOL filed its Amended Complaint.
  • 1/29/99. AT&T filed its Answer and Counterclaim to AOL's Amended Complaint.
  • 2/29/99. AOL filed its Reply to AT&T's counterclaim.
  • 5/7/99. AT&T filed its Motion for Summary Judgment, and supporting pleadings.
  • 8/13/99. Judge Hilton issued his Order and Memorandum Opinion granting AT&T's Motion for Summary Judgment.
  • 8/17/99. AOL filed its Notice of Appeal.

AOL's Attorneys.

  • Everett Johnson, Alice Fisher, and Minh Vu, of the law firm of Latham & Watkins, 1001 Pennsylvania Avenue, NW, Suite 1300, Washington, DC, 20004-2505, 202-637-2200.
  • In house counsel: Randall Boe, Laura Jehl, James Bramson, America Online, Inc., 22000 AOL Way, Dulles, Virginia 20166-9232, 703- 265-1428.

AT&T's Attorneys.

  • James Rosini, Edward Colbert, Brian Mudge, and William Merone, of the law firm of Kenyon & Kenyon, 1075 Connecticut Ave., NW, Washington, DC, 20036-5405.
U.S. District Court.
  • U.S. District Court, Eastern District of Virginia, at Alexandria, Albert V. Bryan Courthouse, 401 Courthouse Square, Alexandria, VA, 22314-5798. This court has no website.
  • Judge Claude M. Hilton has been assigned to decide pretrial motions. Alexandria Courthouse, 8th Floor.
  • Office of the Clerk of the Court, 703-299-2177.

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