Microsoft banks win in fight over POCKETMONEY

In Macia v Microsoft Corporation, the US District Court for the District of Vermont has dismissed a reverse confusion trademark infringement case against Microsoft Corporation, even before it put in its evidence.

At issue was Microsoft's use of MICROSOFT MONEY FOR POCKET PC to refer to a financial software program for use on personal digital assistants. The plaintiff, Harland Macia III, trades as Catamount Software. Catamount claimed that Microsoft's use of the mark infringed its common law trademark rights in POCKETMONEY, which it started using for essentially the same type of software prior to Microsoft's use of its mark. Although the court disagreed with Microsoft that POCKETMONEY was not protectable, the court found for Microsoft on all of its other claims.

The court held that confusion was not likely, primarily because of the differences between the respective marks. In conducting its analysis on this factor, the court focused its comparison of the marks on the non-descriptive portions. Thus, the FOR POCKET PC part of Microsoft's mark was given little or no consideration in determining the similarity of the trademarks. Instead, the court compared MICROSOFT MONEY to POCKETMONEY and found that the word 'money' in each was insufficient to render the marks confusingly similar, particularly when people would rely on the MICROSOFT house mark.

The court used similar reasoning to hold that Microsoft had earlier rights in MICROSOFT MONEY. The court again relied on its finding that FOR POCKET PC was a descriptive part of Microsoft's mark that should not be the focus of the infringement analysis. By concentrating on the MICROSOFT MONEY portion, the court concluded that Microsoft had priority over Catamount, which began use of POCKETMONEY after Microsoft's use of MICROSOFT MONEY in connection with software for desktop computers.

By viewing FOR POCKET PC as a descriptive add-on, the court removed one of the elements common to both marks from the similarity analysis and awarded priority to Microsoft in the MONEY portion of its mark. Thus, the court seems to have carved out an exception to the general rule that composite marks should be considered as a whole when they consist of a mark combined with a descriptive add-on.

Karin Segall, Darby & Darby, New York

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