2440029659_ec73c65b58_z-e1325883989915-296x300On January 3, 2012 the NAF issued a decision in Microsoft Corporation v. Vivek J. Agarwal which touched on the issue of secondary meaning and whether a trademark holder can assert common law rights in a mark when the associated product/service has not been launched or sold to the public.   The dispute here centered on the domain OFFICE365FORCE.COM and Microsoft’s rights in the mark OFFICE 365 covering a suite of cloud-based collaboration and productivity tools for businesses.
Microsoft applied to register the OFFICE 365 mark with the U.S. Patent and Trademark Office on August 2, 2011, but the Registrant registered the domain on April 2011.  Microsoft argued that it had established common law rights in the mark that pre-dated the domain registration because it had announced it was using the mark on October 19, 2010 and also launched a beta test of the product all over the world (including the U.S.) that same day.

I found a few things about the case interesting.  First, it is hard to believe that a company like Microsoft chose a name for (what seems to be) a major software product and forgot to file a trademark application before starting to use it publicly.  I am sure that someone at Microsoft did a trademark search and cleared the mark before they launched the beta (maybe?), but I could only imagine that if there had been a third-party out there using the mark for software that Microsoft would have ended up arguing that it had merely launched a beta test of the software to a limited number of customers and therefore there were no damages as a result.

Next, the traditional test for secondary meaning of a mark requires that there is prima facie evidence that the mark is known to the public.  The test looks to factors such as sales of the product/service, consumer recognition, and publicity and media coverage.

“[t]o support a finding of secondary meaning, a panel may consider factors such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. These factors are considered in conjunction with all of the evidence and the nature of the claimed mark (i.e. whether it may be generic or descriptive).”
Camco Manufacturing, Inc. v. CheapYellowPages.com and Brian Wick (Nat. Arb. Forum, March 18, 2011)
Even for a software goliath like Microsoft establishing secondary meaning via a beta test seems like a difficult burden to overcome.   Although the decision noted that Microsoft had tested the software in 13 countries and with 13,000 customers, this is Microsoft, they have millions of customers, so the likelihood is that the beta test did not even touch the greater extent of Microsoft’s own customers, let alone the larger market place for this type of software.

All of this said, I don’t disagree with the decision.  The Registrant was seemingly up to no good as he simultaneously registered a number of other domains which included Microsoft trademarks and it seems beyond coincidence that the Registrant just happened to register the OFFICE365FORCE.COM domain after Microsoft started publicizing the OFFICE365 mark.

For the non-Microsoft small businesses and start-up companies, the decision here has a couple of important lessons:

  1. Once you decide on a name, file a federal trademark application before you start revealing or testing the product or service in public; and
  2. Don’t assume that testing your product (software or otherwise) will be sufficient to establish secondary meaning for UDRP purposes – in this case the Complainant was Microsoft, they don’t do things on a small scale so even a beta test passed muster, and the Registrant was a serial saboteur.