Excel trademark battle brewing

Software company Microsoft, which makes the ubiquitous Windows operating system and office productivity suite Office, is suing a company over the use of the term "excel." As anyone who has used Microsoft Office knows, there are several programs included in the suite: Word (word processor), Excel (spreadsheet), and Outlook (email/calendar). There are other programs bundled into more expensive versions of Office, including PowerPoint (presentations).

According to the article Microsoft in battle over trademark, Microsoft has been using the name "Excel" since 1985, and now has sued someone for trademark infringement. Savvysoft Inc. makes a product called TurboExcel, which claims to speed up using Excel by up to 300% [wow!]. The company picked the mark after researching its availability. Finding no pending applications or registrations, the company went forward.

Ooops. Microsoft does not like it when people pick names similar to their own. The company now known as Linspire found this out when they called themselves "Lindows." They produced a version of Linux aimed to be as easy to use as Windows. Let's just say it was a nasty court battle around the world, and Lindows settled for being paid a bunch of money to change their name.

Lacking a federally registered trademark, Microsoft filed one for Excel in April, and is now suing Savvysoft Inc. A very important component in trademark disputes is who was using it first, and Microsoft claims all the way back to 1985.

Savvysoft is likely to face a huge barrage of legal filings from Microsoft, and they will likely change their name. This is the cheap option. Fighting might take a long time, and a lot of money, and might not be successful.

I decided to do a little research on behalf of Savvysoft. Turns out that Microsoft has filed trademark applications for some of their office products, but not others. I could not locate a federal trademark application for "Office" and "Word." I found one for "PowerPoint," which was filed back in June 1987. An application for "Outlook" was filed in February 1996. Both "PowerPoint" and "Outlook" have become federal registrations.

The question I ask now is why does a large company such as Microsoft, which has billions of dollars hanging around, wait to file trademark applications on its major products? It is possible to obtain common law trademark rights. To do so, you need to get your product identified with the mark you are using, so that people see your mark and associate your product. This can be tough. Usually this is accomplished by placing the small TM by the name. I recommend any company or person that wants to obtain trademark rights to place a TM by a name or logo that they use as a trademark (and have not yet filed a federal trademark application). While you can obtain common law trademark rights without putting the small TM next to your mark, it is very simple to do so, and it really helps show that you are using it as a trademark.

Looks like the legal people at Microsoft decided not to take this path. Not only did they not file a trademark application on "Excel," they also did not think it necessary to even put a little TM by the name. Here is a screenshot from my version of Excel (Office XP). Some identifying info has been deleted:



I suspect they might start using the little TM now, but it's a little late. My research from the USPTO also returned a few trademark registrations for goods and services using the mark "Excel." Trademarks for similar goods are usually more likely to be a bar to an application. In this case, Microsoft's application for "Excel" is in international class 9. I looked, and there are several registrations in class 9 for "Excel," including one for computer related products that has an earlier use date than Microsoft. This might get interesting if Microsoft is unable to obtain a federal registration...