I am taking this opportunity to volunteer my services as trademark counsel to Microsoft Corporation
A year ago, on August 6, 2012, I blogged that Microsoft, in its efforts to come up with a name for its Windows 8 interface, i.e., the one without the Start button, was inspired by European transportation signs and so sought to name that interface AIRPORT. The problem with this idea was that AirPort Extreme is Apple’s trademark for its Wi-Fi base station and AIRPORT is the subject of U.S. Trademark Registration Nos. 2,117,248; 2,640,080; 2,786,542 and 3,239,864, all registered to Apple. So Microsoft, sticking with the Euro theme in selecting a name for their new interface, transitioned to another mode of transportation, this time, rail, and named their interface, METRO. After all, what’s more European than the name of the Paris subway system? In fact at last year’s Consumer Electronics Show, Steve Ballmer, Microsoft’s CEO, introduced the METRO brand with none other than Ryan Seacrest. See http://youtu.be/5Kk0jhFjDsU This time Europe would prove to be more of a problem than an inspiration as a year ago the New York Times reported that a Microsoft spokesman announced Microsoft would no longer use the METRO brand claiming it had been intended to be used only temporarily. According to the Times piece, a German retailer, Metro, may have had concerns about Microsoft’s use of the name. According to Wikipedia, there is a German retailer called Metro, headquartered in Dusseldorf. Seehttp://en.wikipedia.org/wiki/Metro_AG They are the 5th largest retailer in the world and their Media Markt stores claim to be the #1 electronics retailer in Germany and Europe. Seehttp://www.mediamarkt.de/mcs/shop/unternehmen/geschichte.html
To paraphrase a 2000 hit by a certain well known pop artist, “Oops! I Did It Again” Microsoft got caught by another Euro brand and was forced to change another of its trademarks. This time the mark was SkyDrive, its cloud-based file hosting service. Introduced in 2007, by 2008 it was available in 62 countries and regions. Unfortunately, BSkyB, otherwise known as the British Sky Broadcast Group PLC, a London-based provider of satellite broadcasting, broadband and telephone services, had been in operation since 1984 under the SKY name. Also, unfortunately, not only was the SKY trademark in use for 23 years prior to Microsoft’s adoption of SKY as part of its SKYDRIVE trademark but SKY launched its own cloud storage service called STORE & SHARE on February 20, 2008. After a British high court ruled this past June that Microsoft had infringed Sky’s trademark, noting that customers having problems with Microsoft’s product had called Sky’s help line in the mistaken belief that it was responsible for the SKYDRIVE service, Microsoft announced that it had agreed to change the SKYDRIVE name worldwide after an orderly transition period.
THE MORAL OF THIS STORY: If you are either promoting or intend to promote a brand internationally, you need to conduct an international trademark search to determine if your mark is available for your use abroad before you start promoting your brand under that mark.
