Divided Fourth Circuit rejects AOL's assertion of trademark rights in "You Have Mail" and "IM" but leaves open question of rights in "Buddy List"

The Fourth Circuit has determined that an ISP's use of the phrase You Have Mail and the initials IM in connection with its services is generic and, therefore, incapable of supporting that ISP's assertion of trademark rights in such phrase and initials against a competitor. Since at least 1997, America Online, Inc., the world's largest ISP, has used the terms Buddy List and IM to describe its instant messaging email service. AT&T Corp., a competing ISP, uses the terms Buddy List, You Have Mail! and IM Here in connection with its email service. In 1998, AOL sued AT&T , contending that AT&T's use of such terms constituted trademark infringement and dilution of AOL's marks under the Lanham Act.