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Excel Registered as Trademark, 19 Years Late 250

Posted by timothy from the trademarks-are-dead dept.
unassimilatible writes "In a snafu even better than forgetting to renew the Hotmail.com domain, it seems that Microsoft was a little late in registering 'Excel' as a trademark - 19 years late, to be exact. While MS claims it is protected by the common law of trademark, it may have abandoned the right to enforce the mark, as Savvysoft has been using the mark openly and conspicuously with TurboExcel for some time. TurboExcel, of course, runs on Linux, and MS just sent Savvysoft a cease-and-desist letter to stop using the mark. Apparently, 'Word' and 'Office' are also not registered marks of MS, but being generic terms, MS might have a lot more trouble trying to claim them as marks, as happened in the Lindows kerfuffle."
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Excel Registered as Trademark, 19 Years Late More

Excel Registered as Trademark, 19 Years Late

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  • Excel is a real word too! (Score:5, Insightful)

    by Anonymous Coward on Sunday November 14, 2004 @06:54AM (#10812263)
    They made a point of saying that Word and Office are generic terms, but so is excel! It's a perfectly normal word too, so why is it different when it comes to trademarking??

    • Yup. [reference.com]

      So's a kerfuffle. [reference.com]

    • Re:Excel is a real word too! (Score:5, Funny)

      by Anonymous Coward on Sunday November 14, 2004 @07:00AM (#10812288)
      why is it different when it comes to trademarking??

      The government determines this using a complicated formula which involves how frequently the word is used in the language, how many points it's worth in Scrabble, the would-be trademark holder's political contribution budget, and whether or not George W. Bush is able to pronounce the word correctly.

    • Re:Excel is a real word too! (Score:5, Insightful)

      by krymsin01 ( 700838 ) on Sunday November 14, 2004 @07:03AM (#10812292) Homepage Journal
      So is Gateway. I'd like to see you try to start selling your own Gateway branded computers, though.
    • Yes, but if you were going to pick the most generic one-word name for a word processor you could think of, what would it be?

      How about for an office suite?

      And a spreadsheet program? "Spreadsheet" is what springs to my mind.

      When you use a word that is not normally used in a particular frame of reference, you can't trademark it. This is not the case for Excel.

    • Re:Excel is a real word too! (Score:5, Informative)

      by TheRaven64 ( 641858 ) on Sunday November 14, 2004 @07:46AM (#10812389) Journal
      The important thing in trademark law is whether the word is in common usage in the domain of the product. Word is obviously common in the domain of word processors, since it is simply half of the name of the product type. The same is true of Office / office suites. A spreadsheet called Sheet would be similarly difficult to defend. Excel, however, is not a generic term, and so a spreadsheet called TurboExcel could be accused of attempting to pass off their product as being affiliated with Microsoft Excel.
      • The important thing in trademark law is whether the word is in common usage in the domain of the product.
        Wouldn`t this also be true for Windows? A window is a pretty common word for describing the... uhm... windows used in a GUI.
        • The important thing in trademark law is whether the word is in common usage in the domain of the product.

          Hmmmm, Is "excel" in common usage in the domain of computer software?

        • Re:Excel is a real word too! (Score:4, Interesting)

          by sepluv ( 641107 ) <blakesleyNO@SPAMgmail.com> on Sunday November 14, 2004 @12:52PM (#10813591)
          Yes, the "windows" trademark is technically invalid becuase it is a generic term and there is loads of prior art (DECWindows, original Emacs, &c). Microsoft have almost admitted this and the judge implied it in MS v. Lindows (which is why MS payed Lindows lots to get off their backs). Even if this was not true Microsoft have technically lost the trademark through lack of enforcement.

          (Actually it is worse than that because the highest court of appeal for trademarks in the US declared that "windows" is and always will be unregisterable then the US gov and Microsoft did something which has been censored in Lindows's evidence by the judge resulting in it being registered.)

          Incidentally, until recently (I don't think now) the UK patent office listed on their w3s the _specific_ field that the the trademark holder wished to register for and "windows" was listed as been registered to MS in the generic category window(ing) systems.

    • Re:Excel is a real word too! (Score:5, Informative)

      by cfulmer ( 3166 ) on Sunday November 14, 2004 @09:29AM (#10812672) Journal
      Standard disclaimer: IANAL (yet):

      There's a spectrum of protectability, from generic to descriptive to fanciful. So, you can't trademark the word "Soap" when applied to, well, soap. "Ivory soap," however, is more fanciful. And, you can use "Soap" when applied to something other than soap, like say photo cleaning software -- then it's more fanciful.

      "Word" when applied to a word processor and "Office" when applied to an office suite are on the more generic/descriptive side of it. "Windows" had a hard time because it was generic -- "X-windows" and the idea of "Windowing operating environments" had already been around for a while.

      "Excel," on the other hand, does not have any relation to spreadsheets, making it more fanciful. With respect to spreadsheets, "Excel" is not generic at all, but may become so -- "Aspirin" used to be a trademark of Bayer Corp (and still is in Europe, I believe), but they failed to protect it in the US and lost their right to it.

      Should note that these words do not disappear from the english language just because somebody trademarks them -- people can still use words like "Office" and "Windows" to talk about, well, offices and windows. And, in fact, somebody could conceivably use those words to describe some other product. Look at "Delta" for example -- it's an airline, a faucet manufacturer and a power tool maker. SAS, similarly, is an airline and a software company. The touchstone is customer confusion -- if a customer would be confused by your use of a mark, that's a pretty good indication that you're infringing.
      • "X-windows" had not been around officially under that name at all. The "X Window System" had, of course. _Colloqially_ people have been calling it X-Windows, of course. I do, even though I know its trademarked name, which is clumsy.

        Aspirin was wrenched off Bayer as part of post-war reparations. Nothing to do with them not protecting it.

        FP.
        • It has been known as XWindows prior to the registration of the trademark by Microsoft, so the grandparent's argument still stands. Also, there were other operating systems predating MS called Windows (e.g.: DECWindows) and the term had been used generically (e.g.: "windows system") in the industry since at least the 1950's (e.g.: original Emacs).

          >>I do, even though I know its trademarked name, which is clumsy<<

          I would not describe it as clumsy. You can call it what you like unless you are tr
      • because it was generic
        Windows still is; #1 rule of trademark law (in all jurisdictions): a term can never lose its genericness.

        (If at any point in history a term has been generic it is always generic, in the eyes opf the law, forever.)

        Also, the word "windows" is still used in a generic sense.

      • Further to my previous points on parent (IANAL):

        There's a spectrum of protectability

        Not that I know of, but maybe this is true in US. (I'm in UK.) AFAIK, there is a spectrum but not of protectability; protectability is binary depending on a certain cut-off point along said spectrum.

        With respect to spreadsheets, "Excel" is not generic at all, but may become so

        AFAICC, this would be the current situation with regard to windows (as MS have continually ignored concurrent use since their trademark appl

    • Anyone can trademark a word in the dictionary in a certain field of trade as long as that word does not describe a type of product in that field (in which case case it is a generic term). In most jurisdictions, if a word is or ever has been a generic term in any language it can never be registered (unless you bribe the patent office--see "windows" below).

      "Excel" is not a generic term because it does not describe the type of product. "Excel" has nothing to do with spreadsheets.

      "Word" has a lot to do with

  • Too Late (Score:5, Funny)

    by Anonymous Coward on Sunday November 14, 2004 @06:56AM (#10812272)
    I start shipping my specially branded "Excel toilet paper" next week.

  • Uhhh (Score:3, Informative)

    by Anonymous Coward on Sunday November 14, 2004 @06:59AM (#10812281)
    Since when isn't excel a "generic term"?

    • Re:Uhhh (Score:4, Insightful)

      by JPriest ( 547211 ) on Sunday November 14, 2004 @07:04AM (#10812293) Homepage
      When the "generic term" also happens to be referring to spreadsheets.

      • Re:Uhhh (Score:5, Funny)

        by fishbot ( 301821 ) on Sunday November 14, 2004 @07:12AM (#10812310) Homepage
        Sadly, this is the way language is. People soon start using proper nouns as nouns, as is the case with Hoover, Biro.

        The one that really irritates me is when people take a 'powerpoint' in to a meeting. IT'S A PRESENTATION! The bizarre thing in the last company I worked for is that they were never referred to as presentations, always as powerpoints, even though the presentation software was OpenOffice Impress!

        Still, at least we don't 'send an outlook'...
        • People soon start using proper nouns as nouns, as is the case with Hoover, Biro.

          It happened to the Walkman too - hardly anyone says 'personal stereo' - and it's happening to the iPod. In common usage, 'iPod' is beginning to refer to any hard-disk mp3 player. I've got an iHP-140, another guy I know has a Karma, and a lot of people have actual Apple machines, but 'iPod' is becoming a generic term for any of them.

        • Re:Uhhh (Score:3, Interesting)

          by Secrity ( 742221 )
          This could be a Good thing. Companies can lose trademarks if they become part of common language. The Linoleum trademark was lost this way and Kleenex almost lost their trademark. An interesting situation is that in Canada, the name "Aspirin" is a tradmark and the common name is "ASA". In the US, the name "ASA" is a tradmark and the common name is "aspirin". I wonder if the trademark "Fridgidaire" could have been lost because at one time everybody was calling a refrigerator (reguardless of it's maker)

        • I've had this happen when I wasn't even using presentation software, much less Powerpoint. I gave a talk last year at the AAAS meeting in Seattle. I just used a little shell script with a sequence of calls to xpdf and xv. (You should have seen the looks of confusion on many people in the audience as I booted up Linux with the projector on. They had never seen anything other than MS Windows and couldn't figure out what it was.) Several people afterward referred to my "powerpoint".

      • Time to rename Pathetic Writer [siag.nu] to "Excel Lingo" and one of the TuxRacer clones [planetpenguin.de] to "Excel Racer". And so on.
      • Since some people seem to be missing the point about it being a proper word :).

        I guess that's MS Marketing dollars at work

    • When you are talking about a Microsoft product. More specifically when it is suffixed with 'ent'

    • Re:Uhhh (Score:2, Insightful)

      by mhotchin ( 791085 )
      Because we *all* know that common words can't be used as trademarks! I mean, if that was allowed, then someone would do something really crazy, like name a computer company after something common, perhaps a fruit!

      "Orange Computer, Inc."

      Come on people, get with the program. Trademarks are for a specific field, all that is required is that the term not already have a well known meaning *in that field*.

      Until Excel (the spreadsheet) came along, the word 'excel' was not understood as the name of any p

  • Hyundai Excel (Score:5, Informative)

    by arbi ( 704462 ) on Sunday November 14, 2004 @07:04AM (#10812295)
    It's worth noting that Hyundai made a car line called Excel [histomobile.com] back in 1985. I'm not sure which came first, the spreadsheet or the car.

  • Trademarks are for usage (Score:4, Informative)

    by konekoniku ( 793686 ) on Sunday November 14, 2004 @07:08AM (#10812305)
    I'm not a lawyer, but IIRC trademarks do not cover words, but instead cover the specific usage of words, logos, or even (in a few rare cases). So the fact that "Word," "Office," or "Excel" are real words really don't have a bearing on the case, as long as Microsoft can demonstrate to the court's satisfaction that those terms in relation to computer software are generally associated with Microsoft's products (which, in my opinion, would be a true assertion).
  • . . . if they ever registered 'Microsoft'.

  • And tell me that's not a case of a egotistical marketing think-tank.
    [Link from news.com.com article] http://dw.com.com/redir?destUrl=http%3A%2F%2Fwww.m icrosoft.com%2Flibrary%2Ftoolbar%2F3.0%2Ftrademark s%2Fen-us.mspx&siteId=3&oId=2100-1012-5449348&ontI d=7343&lop=nl.ex [com.com]

    Second on the list: Active Accessibility.

    How does Active Accessibility become a trademark? It's two common english words that could be used to describe anything.

    My stairs have Active Accessibility. My bicycle has

    • Would it not be better to have, `MS Active Accessibility' instead of plain `Active Accessibility' simply for the fact that it would possibly negate any confusion over whether I mean Microsoft's Active Accessibility or my stair's Active Accessibility?

      MS Active Accessibility? Are you referring to MicroSoft Active Accessibility, or My Stair's Active Accessibility?

  • The character 'e' (Score:2, Insightful)

    by gCGBD ( 532991 )
    I recall reading somewhere a couple of years ago (here on slashdot, I think) that Microsoft had trademarked the lower case letter 'e' however.

  • This isn't right.... (Score:5, Informative)

    by Rick Zeman ( 15628 ) on Sunday November 14, 2004 @07:36AM (#10812365)
    ...I remember that someone else had that trademark "Excel" back then and that's why it was always "Microsoft Excel" never just "Excel." It wasn't that MS was sloppy; someone already had it.
    • Then perhaps the other company has since lost it, and that's why MS are applying for it now?

  • ... and don't forget (Score:5, Funny)

    by server_wench ( 515059 ) on Sunday November 14, 2004 @08:14AM (#10812461) Homepage Journal
    What about Access?

    I used to sit at a help desk. One morning someone called and said they were having a problem with Microsoft Excess.

    My answer? "Don't we all?"

    PS - It did turn out to be an Excel question.

  • Half truths in the story? (Score:2, Insightful)

    by Anonymous Coward
    using the mark openly and conspicuously with TurboExcel for some time

    Microsoft filed in May. SavvySoft introduced TurboExcel in June. So, yes, it has been "openly and conspicuously" using the Excel brand "for some time", like the story post claims.

    But the gutless faggot who wrote the article summary neglected to mention that "some time" really means one month AFTER Microsoft filed trademark.

    Honestly, the story summary is just pure heat. Would you trust anything the author of this post has to

    • Re:Half truths in the story? (Score:2, Insightful)

      by Anonymous Coward
      You may have a point, but you should be modded down for your language.

      It's not funny, and it does not make you look bigger. Just quit the cursing all right?

      Thanks.
    • realize that I'm not saying that Microsoft should be awarded a trademark for Excel. (I think it's too general a term, plus they waited 19 years, blah blah blah.)

      Uh, alright. While your opinion is that Microsoft shouldn't get a trademark for the reasons you've listed, my understanding is that the law holds an opinion quite different from yours. I know, I know, that's an insignificant detail around here, but it is peculiar that you would trash the author for failing to point out the release date of TurboE

  • "In a snafu even better than forgetting to renew the Hotmail.com domain,"

    Links to the stroy:

    "Microsoft was busy covering up an almighty cock-up last night after forgetting to renew its hotmail.co.uk domain name."

  • Microsoft is correct on this, however (Score:5, Informative)

    by rfc1394 ( 155777 ) <Paul@paul-robinson.us> on Sunday November 14, 2004 @08:38AM (#10812520) Homepage Journal

    While some countries have a rule that ownership of a mark comes only by registration, in the U.S. at least, ownership comes only by use. (There are limited exceptions for registration prior to use.) Note that my discussion here only deals with Federal registration, each state has state trademark registration with their own rules which generally are similar.

    A party that uses a unique word, device (an image or picture), phrase, sound or color exclusively to identify specific goods or services has the right to exclusively use that mark whether or not they register it. If the mark is truly distinctive they can sue others who use the same or deceptively similar marks even if they do not register the mark.

    There are generally two classes of marks, strong marks and weak marks. Strong marks are words that are created and symbols that are so obviously tied to the issuer that even use in an unrelated field can be stopped, such as if someone other than the actual owner started to sell vacuum cleaners under the name Kodak, or sold computer disks under the name Exxon.

    Weak marks are marks that generally only protect the product as used by its owner, and not for other goods. The term 'Acme' is a very weak mark, and if someone else was using the same mark unless it is on identical goods or services there are no grounds to go after someone else using even the identical mark. Which is why the people making shirts and the people making staples can both use the term 'Arrow' and neither is infringing on the other.

    Most trademarks and servicemarks have varying degrees of being strong or weak depending on how well the mark has been policed, that is, the owner has made an effort to stop others from using the same mark either to refer to the product regardless of the manufacturer ("generic"). The terms 'aspirin', 'escalator', 'laundromat' and 'celophane' lost trademark status because of the manufacturer's failure to adequately police the mark against people using it as a generic term for the product in question. (Note that 'Aspirin' is still a trademark of Bayer in some other countries for salycilic acid.)

    Ownership of a mark comes through use and one has the right to stop use of a deceptively similar mark on the same goods or services if the mark is not a weak mark. If the mark is extremely strong, as I indicated, it can even protect against use for other products and services as well. But ownership comes through use of a mark irregardless of registration.

    Registration of a mark grants certain additional benefits such as presumption of validity and notice to others (since registered marks are published in the Trademark Register.) Once a mark has been registered continuously for five years it can acquire incontestible status.

    The fact that MS has failed to register the mark 'Excel' for many years does not in any way weaken any rights they may have in the mark nor does it excuse anyone else's misuse of the mark. What does weaken their rights or excuse others use is the failure by Microsoft to police their mark and stop any known use of the same or deceptively similar marks to theirs.

    The issue is also likelihood of confusion. Unless the general customer who would buy Excel might be confused into thinking TurboExcel was produced by the same company, it doesn't matter how much MS complains or doesn't like it, there is no misuse and Microsoft has no grounds to stop them. M$ would be better off doing what it did to Lindows and pay this company to change the name unless it knows the company can't afford or won't continue to defend the name, then it should probably engage in as much protracted legislation as possible.

    • The terms 'aspirin', 'escalator', 'laundromat' and 'celophane' lost trademark status because of the manufacturer's failure to adequately police the mark against people using it as a generic term for the product in question. (Note that 'Aspirin' is still a trademark of Bayer in some other countries for salycilic acid.)

      Interesting thing about Bayer's trademark for Aspirin: they were forced to give it up to France Britain, Russia, and the US as part of the reparations stipulated in the Treaty of Versailles

  • How close does it need to be? (Score:3, Interesting)

    by stwrtpj ( 518864 ) on Sunday November 14, 2004 @09:00AM (#10812594) Journal
    Here's a question for anyone out there with any knowledge in this area: how close does a name need to be to a trademark to constitute infingement? Here in Colorado, the primary electrical utility company for much of the state is Xcel Energy. "Xcel" is not spelled the same, but does the fact that it sounds exactly alike and is only one letter off mean anything from the perspective of the law? Does it mean anything that it's a totally different industry (and hence little chance it would be confused with a Microsoft product)?

  • What's the big deal? (Score:4, Insightful)

    by Txiasaeia ( 581598 ) on Sunday November 14, 2004 @09:11AM (#10812621)
    Don't see what the big deal is. Why is MS even bothering? Nobody's going to confuse "Turbo Excel" with "Microsoft Excel" - nobody that *uses* Office or Windows, anyway.
    • They have armies of lawyers sitting around the offices. Their job is making life hell for the competition -- any competition. Sending out a C&D letter is riskfree. Best possible result: competition decides to change the name, which costs them time and money. Worst possible result: competition laughs it off, and you can decide whether or not to take further steps later.
    • Don't see what the big deal is. Why is MS even bothering? Nobody's going to confuse "Turbo Excel" with "Microsoft Excel" - nobody that *uses* Office or Windows, anyway.

      The big deal is that if they don't enforce their trademark, they could lose it. Just like how aspirin is now a generic term in the US but a trademark everywhere else. If that were to happen, anyone could start calling their spreadsheet software Excel.
      • The big deal is that if they don't enforce their trademark, they could lose it. Just like how aspirin is now a generic term in the US but a trademark everywhere else. If that were to happen, anyone could start calling their spreadsheet software Excel.
        However, as per the article, they don't actually own the trademark, so there's no way to lose it anyway.

        People have been able to call their spreadsheet "Excel" for 19 years already :D

        smash.

  • First hand experience with trademarks is painful (Score:5, Interesting)

    by amichalo ( 132545 ) on Sunday November 14, 2004 @10:06AM (#10812814)
    I can say from first hand experience that trademark issues are so painful you will wish you were dead.

    I just left a company that was launching a new product. Marketing had me investigate the availability of several domain names. I gave thema report of what was available. Weeks later, they told me they had registered a couple trademarks that corresponded with a domain and would I register the domain name. Well what do you know, the domain was now registered by someone else. (This became my fault.)

    We sued the company for trademark infringement since we owned the trademark.

    Long story short, we spend a year and thousands of dollars just to eventually drop the case and go with a different URL.

    Trademarks are hell.

    • you should have registered every doman you present (Score:2, Insightful)

      by Anonymous Coward
      (This became my fault)

      It was your fault. If the domain names were open, you should have registered them for one year even if you didn't need them. If the name was good enough to waste management's time with, you should have registered it. The meeting times along dwarf the cost of the domain names. You were being penny pincher, pound foolish.
  • Wouldn't this make the Excel trademark invalid, because of prior art? I know prior art is usually a patent issue, but it seems like it would apply to trademarks too -- if a smaller company's business also depends on a brand that would have been a trademark violation, then by enforcing the trademark you are in effect actively doing what trademarks are supposed to passively stop. If it is invalid, someone should hurry up and go make a 'Word' and 'Office' -- though 'Office' for an office suite and 'Word' for a

  • Retard /. Law Commentators (Score:4, Informative)

    by smack.addict ( 116174 ) on Sunday November 14, 2004 @10:41AM (#10812965)
    Look at all the retards commenting on trademark law.

    Your mark is a trademark as long as you treat it as a trademark. You don't need to register it, but registering it enables you certain powers.

    The only problems Microsoft has are
    a) with the generic nature of the term Excel
    b) that they had not sent cease and desist letters earlier

    Unlike copyright, failure to enforce a trademark is the same as giving up a trademark.

    Unlike patent law, prior existence of other examples does not itself render the mark invalid.
    • Looks like they forgot to put the postage on a *lot* of cease and desist letters. Go here: http://www.ozgrid.com/Services/ExcelAdd-insPage.ht m [ozgrid.com] (there's a page 2 and 3, as well) to see a slew of spreadsheet products from lots of different companies with Excel or XL in their name. And then check out Microsoft's own site: http://office.microsoft.com/en-us/marketplace/defa ult.aspx [microsoft.com] under "Analysis Tools" to see no less than 15 different products from other companies with Excel in their name. Microsof

    • Re:Retard /. Law Commentators (Score:4, Interesting)

      by theLOUDroom ( 556455 ) on Sunday November 14, 2004 @04:26PM (#10814765)
      Unlike patent law, prior existence of other examples does not itself render the mark invalid.

      Actually it does.

      If a term is already being used to describe something you can't suddenly claim it to be your trademark.

      For instance, you can't decide you want to make Beer (tm) beer.
      If someone can show examples of where your trademark was already an industry standard term for the product/service/whatever you stand an extremely good chance of losing it.

      This is why Microsoft settled with Lindows.
      If they had let the case continue, they stood a very good chance of losing since "Windows" was already common computer terminology.

      Although the terminology used is not identical, both patents and trademark require "uniqueness". You can't just claim rights to something that wasn't your idea.
      • You are not at all talking about the same thing. "Prior art" in patent law automatically does a blow to your patent (assuming it is the same thing).

        The existence of someone else using your trademark before you is not in itself problematic for a trademark holder.

        It depends on the context of the so-called "prior art", including industry and scope of exposure.

        Trademark law does not require uniqueness.
        • You are not at all talking about the same thing.

          Legally, they're called differnet things but practially, it's the same concept:
          You can't claim exclusive rights to something you didn't create.

          If you want to patent the use of technique X in field Y, you better be the first person to use it.
          If you want to trademark word X in field Y, there better not be anyone else using it.

          "Prior art" in patent law automatically does a blow to your patent (assuming it is the same thing).

          In the same sense that the

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