Vanity 800s in peril

If you think your vanity 800-number is protected under trademark laws, think again. In mid-July, a New Jersey District Court dismissed liquor cataloger 800 Spirits' two-and-a-half-year-old lawsuit seeking to prevent competitor Liquor By Wire from using the telephone number 1-800-Spirited (the firm also uses 1-888-Spirited). The court reasoned that the word "spirits" and any derivatives such as "spirited" are generic and therefore not protected by trademark law.

"We didn't try to market ourselves as 800 Spirits," says Steve Olsher, vice president at the Chicago-based Liquor By Wire, which has promoted the 800-Spirited phone number since 1994. "This ruling opens the doors to fair competition and allows the smaller players to market memorable phone numbers."

Calls to 800 Spirits and Ron Gould, the attorney at Mathews, Collins, Shepherd & Gould, which represents the company, went unanswered at press time. It's not known if 800 Spirits will appeal the ruling.

While the ruling is a victory for Liquor By Wire, trademark lawyers and telecommunication insiders say the company shouldn't pop open the champagne just yet. The New Jersey ruling conflicts with rulings in other states. For instance, in the 1989 decision Dial-A-Mattress v. Page, the New York District Court ruled that the use of the generic word "mattress" by New York-area retailer Dial-A-Mattress in its local phone numbers-including 212-Mattres ("leave off the last 's' for 'savings'")-was protected under trademark law. The defendant, furniture company Easy Bed, was allowed to keep its 1-800-Mattress phone number, but it was not allowed to use the number within the New York area and was forced to issue a disclaimer on all marketing materials and customer calls.

In contrast, according to the 800 Spirits v. Liquor By Wire ruling, "existing trademarks [on generic 800-numbers] are moot points for companies such as 800-Flowers," says Judith Oppenheimer of ICB Toll Free, a New York consultancy. "We're dealing with two systems that conflict with one another. The Federal Communications Commission relies on trademark laws, yet telecommunications laws aren't recognized in trademark disputes. Catalogers should petition the FCC for more rights in 800-numbers."