Is this a case of Microsoft sticking it to the little guy, or is this a valid case of protecting a legal trademark? This also begs the question, am I in the right forum for this?
I eagerly await all responses.
Jeff
Microsoft has admitted to overreacting in this case.
But the answer to your question is a qualified “yes.”
Trademark law requires that the trademark holder zealously pursue all violations or else it runs the risk of losing its trademark. Where the line is drawn is a matter of legal interpretation.
I’ll leave it to the lawyers to say whether this is actually a case where confusion with the original product might be a consequence. But I don’t fault Microsoft’s lawyers for sending out the original warning letter. That’s simply an automatic response to anything even vaguely in the ballpark these days.
Ultimately, the concern for Microsoft is this:
They be nice guys and let the guy use the site. Then someone starts marketing “Mikrosoft” software in direct competition. Microsoft sues. Mikrosoft says, “They let Mike Rowe do this, so they’re not defending their trademark. It’s fair game.” The judge agrees.
Not a likely scenario, but it’s part of a lawyer’s jobs to defend a company against unlikely scenarios. By going after Mike Rowe, they preempt other, more dangerous infringements.
Doesn’t Mr. Rowe have an advantage in that Mike Rowe is his legal given name since birth? It’s not contrived. And when seen in writing there is no possibility of confusion. And IANAL but I believe that you can generally win trademark suits only if you can show that the public would be confused or misled. Baretta the Italian gun company sued GM over the Baretta car name but lost. (Ironically I once met a guy who was an executive with the US branch of the gun company and he drove a Baretta.)
There was a publicized case a few years ago when Archie Comics sued some guy because he registered veronica.com for his daughter Veronica. I think they backed off. DC Comics sued some guys that started a software company called Brainiac when they registered their web site. They were comic book fans and so named their company after this villain.
I see Mike’s Case, and I see Bill Gates’ Side (Or his company’s side… I will use the term Gates to mean the ‘real’ Microsoft to avoid confusion).
Both have a valid argument, and Gates could argue that he has more value in the name. Mike can argue that is indeed his name … and the see saw battle would continue for some time. Gates has more resources(Capital and otherwise) to eventually have the outcome in his (gates’) favor.
If, and as I ask this If, I know it will never come to be, Timing and Tempo of the names could be enforced, this would be less of an issue. Mike…Rowe…Soft could be different from Microsoft… if the latter is even more rolled off the tounge. But timing could not be enforced and thus this is the exact issue.
Another Opinion is just piping in here… Notice John Doe Soft would not be an issue… score another for Gates.
No advantage at all, in the same way that two brothers named McDonald have no advantage in starting a restaurant named McDonalds. They’re in the same field as the trademark owner.
Your other example is about products in two different categories. There’s a Cadillac dog food but people are not going to associate it with the car. (And they’re both spelled Beretta, but nevermind.)
The legal question is one of possible confusion, true, but only a judge has the final decision over whether that is likely.
There will be a settlement here without anyone going to court, so we’ll never know.