Bing! or bing – Who Owns the Mark?

One of the most important tasks in marketing a new product or service is finding just the right word that will stick in the public’s collective mind. Some of these words, like Chevrolet’s Volt, are suggestive of a characteristic of the product (namely, an electric car). Others, like the Blackberry® mobile phone, are purely arbitrary. But when coming up with le mot juste, or the 
right word, care must be taken to make sure that no one else has already staked a claim to this word for similar goods or services. Even corporate giants with a litany of lawyers sometimes find themselves in trademark turf wars. A recent example involves a small design company that’s taken on Microsoft over the word BING.

When Microsoft decided to enter the lucrative search engine market, the company began looking for a catchy word that would rival Google® for public recognition. It was finally decided that BING would be that word.On September 22, 2008, in a globally strategic move, Microsoft filed for trademark registration, not in the United States, but in New Zealand. By doing so, Microsoft was able to claim an earlier priority date when it filed two “intent to use” applications in the United States nearly six months later for a variety of goods and services centered around search engines.

In the United States, as well as many other common law countries, the ownership of a trademark or service mark is usually based on which party was the first to use the mark. One exception to the First to Use Rule is when an applicant claims a bona fide intent to use by filing a federal application prior to actually using the mark. The filing date then becomes the “constructive date of first use.” By filing in New Zealand first, Microsoft might have gained an additional advantage over any party that started using the BING mark between September of 2008 and March of 2009 in “first to use” countries, as well a similar leg up on parties that filed for that mark in “first to register” countries during that same period.

Nearly three months after Microsoft filed its intent-to-use applications, Bing! Information Design, LLC (BID), a small design firm started in St. Louis, Missouri, filed a “use” application for the mark BING!, claiming a date of first use at least as early as April 1, 2000. In December 2009, BID filed both a Notice of Opposition in the Trademark Trial and Appeal Board (TTAB) to block registration of the Microsoft mark, and a lawsuit in St. Louis circuit court for common law trademark infringement and unfair competition.

Is there any way BID could have increased its leverage over Microsoft in this situation? Hindsight is always 20/20, but by filing for federal trademark registration when it first began using the BING! mark instead of waiting nine years until a software giant started using it, BID could have already had a federal registration, with the possibility of incontestability after five years of continuous use.

If BID had an exclusive right to use the mark through a federal trademark registration, Microsoft probably would have been deterred from adopting the BING mark in the first place. But even if Microsoft had decided to name its search engine BING, with a federal registration in hand, BID could have sued Microsoft in federal court and claimed attorney’s fees as well as statutory damages. By not possessing a federal registration, BID had to resort to filing suit in state court for common law trademark infringement, greatly limiting its options.

It remains to be seen how the battle of the Bings will be resolved, but this much is clear: trademarks are an asset that can greatly increase in value almost over night. By acquiring maximum protection of that asset as early as possible, a trademark owner is better prepared to take on the biggest of foes.

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