Intellectual Property Law

Microsoft Appears to Leapfrog Competing ITU Application for Search Engine Mark

By Michael Atkins

On Dec. 2, I talked about how cool it was that local tech bloggers investigated WHOIS and PTO databases to learn more about Microsoft’s apparent intent to adopt KUMO as its new search engine brand.

One snag that TechFlash blogger Todd Bishop pointed out was on Aug. 8, someone in Venezuela filed an intent-to-use application for KUMO, also in connection with search engines. The applicant did not seem to be connected to Microsoft, raising the question of how (and whether) the filer knew that Microsoft sought to use KUMO as its own search engine brand.

Last week, the story took an interesting turn. On Dec. 4, Microsoft filed an intent-to-use application for KUMO for search engines. Its doing so seems to dispel any connection with the gentleman from Venezuela. But even more interesting, it’s a Section 44(d) application that’s supported by a June 18 filing in South Africa.

So, in the priority race… Microsoft wins!

Assuming its South African application matures to registration, the PTO will give Microsoft’s U.S. application the benefit of its June 18 South African filing date, which beats the Venezuelan gentleman’s filing by almost one month. Since the marks are identical and the services are nearly identical, the PTO will likely grant Microsoft’s application and deny the Venezuelan’s on likelihood of confusion grounds. Touché!

I hadn’t considered this, but this strategy makes good, sneaky sense. If you’re a big company working on a secret worldwide re-branding effort, file your first application somewhere a little off-the-radar. Section 44(d) enables you to take advantage of that filing date in the U.S. as long as you file your U.S. application within six months and your goods and services description is the same. With this strategy, you can leapfrog back in time over would-be copycat filers. Neat!

TechFlash wrote about this development yesterday in a follow-up post.

Full post as published by Seattle Trademark Lawyer on December 16, 2008 (boomark / email).