Bing! Bang! Bust! TM!

The Guardian reports that several small outfits are suing Microsoft over the name of its Bing! search engine, claiming infringement.

! Information Design, based in St Louis, Missouri, launched a legal action last week in a local court – alleging that the multibillion-dollar software corporation “had knowledge of the mark” and “intentionally interfered” when it relaunched its search engine with a new name earlier this year.


In addition, two other companies are also taking action against over what they say are trademark infringements: a web-based shopping service called BongoBing and software company Terabyte, which has a product called BootIt Next Generation, or Bing for short.

(Bing! Information Design appears to be a graphics design outfit. I guess “information design” is “graphics design” with a good press agent.)

The story also states, in the portion that I snipped, that Bing! Information Design did not actually file for a trademark until May of this year, when rumors of Microsoft’s Bing! were already spreading wildly, although they have been using the name for a decade or so.

Though I am not a big fan of Microsoft’s business practices, I think they are on solid ground here and that the suits have little chance of success if the case goes to trial–and Microsoft has the resources to take it to trial. To quote an article from Harvard University’s website on trademark law:

If a party owns the rights to a particular trademark, that party can sue subsequent parties for . 15 U.S.C. 1114, 1125. The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark “Apple,” my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, “Applet” computers may be off-limits; perhaps also “Apricot.” On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa.

My guess is that the plaintiffs are hoping for a settlement and quick cash-out.

My hope is that they don’t get one.

I think it is unlikely that, under the reasonable person standard, a court will conclude that a graphics design outfit, an online shopping service, or a single product of a software firm could be confused with a search engine. Furthermore, given the frequency with which Microsoft changes the name of its search engine, by the time these suits near trial, Bing! will probably have been bonged.

A Note on Why Companies Settle: Back when I worked for the railroad, the railroad was frequently sued by vehicle drivers (or their estates) who had been hit by trains at grade crossings.

Think about it: The train didn’t make a hard left and chase the car down the street.

The railroad was not at fault, but the railroad often settled because it was cheaper than going to court (the prospect of losing was not the issue; the prospect of paying a lawyer umpty-ump hundreds of dollars an hour was, not so much for the anticipated length of a trial as for the hundreds of hours of preliminaries and preparation. A $30,000 settlement was cheaper fighting and winning for $50,000.

And, no, the house corporate lawyers couldn’t do it: they weren’t trial lawyers and they usually weren’t admitted to the bar in the state in which the collision happened.

(The problem with this strategy is that you get a reputation as easy-pickings; the railroad finally got wise and started counter-suing for damages to the locomotives and rights-of-way.)

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