Microsoft seeks to register EXCEL trademark 19 years after first use

After relying on its common law trademark rights for the past 19 years, Microsoft has finally decided to register its EXCEL mark. It filed an application in April of this year and a November status check revealed that the application has been approved for publication for opposition.

Microsoft first introduced its Excel spreadsheet program in 1985. Since then, Excel has surpassed all other spreadsheet programs to become the standard spreadsheet with an estimated 90% market share.

One can only speculate why Microsoft chose the registration path in protecting its rights in the EXCEL mark. It may be in reaction to the increasing number of companies using the term 'Excel' in their product marks. (Curiously, however, two earlier-filed Microsoft applications to register the EXCEL.NET mark in connection with a host of computer services and software - both filed on an intent-to-use basis on June 21 2000 - have been suspended from further action.) For example, a New York software provider named Savvysoft released in June of this year a program called TurboExcel. Savvysoft's website describes its TurboExcel product as:

"a groundbreaking Excel-based robotic programmer that lets you write programs in C++ using only an Excel spreadsheet. TurboExcel secures your Excel spreadsheets, runs them up to 300 times faster, and makes them instantly portable."

A spokesperson for Microsoft announced that the company sent a cease and desist letter to Savvysoft demanding that it change its product's name as well as to a number of other undisclosed companies using the EXCEL mark.

According to a Savvysoft spokesperson, the company believes that Microsoft is going after it not because of the EXCEL mark, but because Savvysoft's software program allows users to convert Excel spreadsheets into different formats and run them on the Linux operating system, a rival to Microsoft's Windows system. Microsoft denies this.

Microsoft's experience with its EXCEL mark serves as a practical reminder to companies: (i) to carefully weigh the benefits of federally registering their marks as opposed to relying on common law rights when developing their trademark portfolios; and (ii) of the necessity of vigilantly policing their marks so as to prevent them becoming diluted or, even worse, generic.

Kandis M Koustenis, Goodwin Procter LLP, New York

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