The court reasoned that, in this context, the phrase is simply being used with its common meaning and therefore is a generic phrase.
The case was brought by America Online against AT&T which uses the phrases “You Have Mail”, “IM” and “buddy list” for its e-mail and instant messaging services. America Online alleged trade mark infringement and trade mark dilution.
The court rejected evidence that a percentage of consumers identify the phrase “You Have Mail” with AOL and said “IM” is an abbreviation of the generic name for the product, not a trade mark. The issue over AT&T's use of the phrase “buddy list” will be determined at a later stage.
One of the panel of judges observed that because the AOL service now uses the phrase “You’ve Got Mail” instead of “You Have Mail,” the question of whether its use of the latter phrase should be protected is irrelevant.