Since I spent the last few weeks writing about Apple and the rampant trademark infringement happening in its iTunes App Store, I figured I’d even things out a little with an anecdote about everyone’s favorite whipping boy of the computer industry.
On March 2, 2009, Microsoft filed two trademark applications seeking to register the mark BING (Serial Nos. 77681512 and 77681498). Both of these applications were filed on an “intent-to-use” basis, meaning that Microsoft had not yet used the BING mark in commerce as of the filing date. As you can see, these applications together list a broad range of services, including advertising and online advertising directory services, internet search engine services, telecommunication services, and a variety of educational and entertainment services. The Trademark Office did not cite any existing registrations or prior-filed applications against Microsoft that would bar the registration of its BING mark, and both applications were published for opposition shortly after they were filed.
Yep, things were looking pretty good for Microsoft. Well, that is until two separate companies filed oppositions against Microsoft challenging its right to register BING. The first opposition was filed by The Laptop Company, Inc. on October 28, 2009. According to the records, The Laptop Company has been using the mark BONGOBING since 2008 in connection with “comparison shopping services” and “promoting the goods and services of others by means of operating an online shopping mall with links to the retail websites of others.” The Laptop Company filed an application to register its mark on August 2, 2009, which was five months after Microsoft filed its applications for BING. When the Trademark Office cited one of Microsoft’s applications as a potential basis for refusing registration of BONGOBING, The Laptop Company filed an opposition against both of Microsoft’s applications on the basis of priority and likelihood of confusion. Microsoft filed its answer to the opposition on December 1, 2009, denying nearly all of The Laptop Company’s allegations and claims.
But the fun doesn’t stop there for Microsoft. On December 17, 2009, a second opposition was filed by a company called Bing! Information Design, LLC (you can view its website here). The Trademark Office’s records indicate that Bing! has been using the trademark BING! for nearly a decade in association with advertising services, designing advertising and promotional materials for others, creating corporate/brand identities for others, and other related services. Bing! applied to federally register its mark on May 26, 2009 (Serial No. 77744847), which was almost three months after Microsoft filed its applications for BING. As in the case of the BONGOBING application, the Trademark Office cited one of Microsoft’s applications as a potential basis for refusing registration of BING! and, as a result, Bing! filed its opposition against the application alleging priority and likelihood of confusion. Furthermore, according to this article, Bing! has also recently filed a trademark infringement lawsuit against Microsoft in St. Louis circuit court (not too far from where I’m currently sitting).
These cases sort of remind me of an issue I wrote about about a few months ago concerning a challenge by a small Minnesota restaurant against the use by McDonald’s of the slogan WHO’S YOUR PATTY. In that case, Lion’s Tap was the prior user of WHO’S YOUR PATTY in connection with its restaurant and bar services, but it had never taken any action to register its trademark at either the federal or state level. When McDonald’s started using the same tagline in its advertising campaigns, Lion’s Tap quickly filed its own federal trademark application and sued McDonald’s for trademark infringement. The parties settled that case, and although the terms were never disclosed, my gut feeling is that there was a monetary payment from McDonald’s to Lion’s Tap.
I bet all of you are just crying a big old river for Microsoft, having to spend considerable time and resources defending two oppositions and a trademark infringement lawsuit. But, the fact remains that much of this litigation likely would have been unnecessary had both The Laptop Company and Bing! Information Design applied to register their trademarks at the time they adopted them. Had they done so, their trademarks would have been revealed in even the most basic trademark clearance search and Microsoft may have either (1) been dissuaded from adopting BING, or (2) approached the companies about a potential buyout of their trademarks if Microsoft had its heart set on using BING. Either way, this litigation may have been avoided, but instead, both The Laptop Company and Bing! Information Design could shell out in litigation expenses 50-100 times the amount they would have spent on simply registering their trademarks early in their business endeavors.
Moral of the story: Trademark Registration Now < Trademark Litigation Later