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November 12, 2004
a tale of Microsoft's delayed trademark
A rose by any other name is still a rose, but will Microsoft's spreadsheet program still be known as Excel?
According to an article in ZDNet, although Microsoft began using the Excel mark on its spreadsheet product when it was introduced in 1985, they only recently applied for a federal registration on the Excel mark.
The company filed a trademark application for Excel in April, even though the name is already protected by something called common law trademark, said Microsoft spokeswoman Stacy Drake. The company wants to make it official with the United States Patent and Trademark Office because "it doesn't hurt to take it one step further," Drake said.
It may also have something to do with the fact that dozens of software products now feature "Excel" in their names. TurboExcel, developed by a New York company called Savvysoft, is one of them. Microsoft recently sent a letter to the company, demanding it change the product's name. The software giant has approached a number of others about Excel trademark infringements as well, Drake said. She declined to name them.
"Something called common law trademark" -- quite a vague description.
As a way of better explanation, trademark rights automatically accrue upon the use of a symbol in conjunction with particular goods and services in commerce. No registration is required to obtain the trademark rights -- the rights in and to the use of the mark on the goods and services is automatic upon actual use. These "common law" rights may be limited, however, to only the geographic area in which the mark is actually being used or to the specific goods it is being used on. Federal registration provides nationwide rights (even in geographic areas where the mark isn't being used) as well as notice to anyone who searches the federal trademark registration database. Federal registration also provides for statutory damages (i.e. monetary rewards that require no actual proof of real damages) in cases of infringement.
Take-away: as soon as you use a mark in commerce on a particular goods & services, you have acquired trademark rights in and to the mark. Immediately mark the goods with the TM or SM common law designation to put consumers and competitors on notice that you are using the mark as a trademark. In today's national and global economy, I would also strongly advise anyone to also federally register their marks -- it is fairly inexpensive and provides a worthwhile additional scope of protection and notice.
Posted by Douglas Sorocco at 10:30 AM.
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You left out an important point: the trademark is weakened or abandoned if you let others use the name after you, which Microsoft has clearly done for many years, going so far as to promote many of these other spreadsheet addins on their Web site.And if a (TM) is required after the name if it's not registered, check out your copy of Excel (any version) and see if you can find that anywhere. Microsoft seemed to be pretty diligent about (R) and (TM) with everything else, but not Excel. You can even go to Microsoft's web site, to the page that says "These are our trademarks" and you won't find Excel listed.And although a Federal registration is not required, it may mean something to the courts if a registration is denied, or opposed. While Microsoft filed in April 2004, the US PTO has not even assigned an examiner to it yet, let alone approved it. There is no guarantee that it will make it through.
Posted by: Philip Skeptic at November 15, 2004 03:23 PM
I can't believe it, my co-worker just bought a car for $23357. Isn't that crazy!
Posted by: Betsy Markum at February 9, 2006 01:37 PM
