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November 16, 2004

microsoft excel trademark redux

In a comment to the PHOSITA's previous post on Microsoft's failure to previously federally register the Excel trademark, I thought I could offer some further clarification.

The comment by "Philip Skeptic" was:

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.

Your comments seem accurate but only when taken in the proper context. Abandonment comes from non-use etc.... Laches comes from what in essence would be the intentional non-enforcement of your rights. From your comments and from what I can tell, neither seems applicable to the Excel mark. Microsoft has seemed to take the necessary actions to create and maintain trademark rights to the term "Excel." The rub comes from what may be perceived as its late registration of the mark and particularly its recent demand on a small company by the name of Savvysoft to cease using the term Excel in software called TurboExcel.

However, as reported in USA Today, Richard Tanenbaum, founder of Savvysoft, said the company researched the name before selecting TurboExcel for its add-on program for Microsoft Excel. He said the search turned up no evidence that Microsoft had registered "Excel" as a trademark.

Of course, lack of registration confers no rights of use to others for similar goods or services and would not be a justifiable basis to adopt another’s well known mark. So, I am not overly sympathetic to one who adopts a mark on the basis of "non-registration." Additionally, though it is a good idea, using the "TM" designator is not a prerequisite to the assertion of common law trademark rights. So, not using the "TM" designation is not overly significant. The real question is whether Micrsoft used the term Excel as a trademark, ie. a source identifier in commerce?

You also mentioned that a mark is weakened by third party uses. That is true, but perhaps not so important initially for registration purposes. Keep in mind that the USPTO really is looking to determine if a mark is "capable" of distinguishing the goods and/or services as a threshold for registration. Strength of the mark really is an issue more suited for an infringement analysis rather than registration. This makes sense as such an analysis can be somewhat subjective and is so context intensive that the USPTO is not well equipped to undertake that sort of factual scrutiny during the initial registration process. If it did undertake that kind of initial review the length of time from filing to issuance would be increased exponentially.

Of course other users of the Excel mark can oppose the registration at the proper time. Even then the analysis is not necessarily focused on strength or weakness of the mark in the application, but on whether the registration of the mark will conflict with another's mark or common usage. Any person who believes that he or she would be damaged by the registration of a mark upon the Principal Register may oppose the registration. The opposition proceeding will allow those persons you identified, or others, to come forward to challenge the registration for a variety of reasons, including the claimed "wide spread" use of the term "Excel" and injurious consequences of registration. Note however, that even if the mark is refused registration an action for unfair competition under the Lanham Act could proceed on the unregistered mark.

Should Microsoft have been a little quicker on the trigger? Probably. Do subsequent users of a common law trademark (arguably well known), who choose to incorporate that mark into their marketing plans do so at their own risk? Yup!

Posted by at 05:30 PM.
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