Question about "Windows" trademark in software

[dev456]

Hello. I'm developing a web app, its name contains word 'window' (like WindowSuffix). Now I'm wondering whether will I infringe "Windows" trademark. Notice that I'm using singular form, window. And it's just an app, not operating system. But I'm not sure if the categories are more general, like software. Any advice greatly appreciated, I really get used to the current name and can't think of anything better matching it, but it's better to change the name before its launch rather than after, if there is legal risk.

 

[quincy]

Hello. I'm developing a web app, its name contains word 'window' (like WindowSuffix). Now I'm wondering whether will I infringe "Windows" trademark. Notice that I'm using singular form, window. And it's just an app, not operating system. But I'm not sure if the categories are more general, like software. Any advice greatly appreciated, I really get used to the current name and can't think of anything better matching it, but it's better to change the name before its launch rather than after, if there is legal risk.

What is the name of your state or, if not in the US, what is the name of your country?

Your use of the word "Window" in connection with a web app would attract the attention of Microsoft's attorneys and you no doubt would receive a cease and desist letter, possibly a demand for dollar-damages, and potentially a summons and complaint notifying you that a trademark infringement lawsuit has been filed against you.

Some trademarks are famous marks and the holder of these famous marks can prevent all uses of their marks by others. There is a presumption of consumer confusion.

Here is a link to Microsoft's trademarks and how you can (and cannot) use them: https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/usage/general.aspx

I think it is far better for you to change the name of your app before its launch rather than be forced to change it later and this is what I recommend you do - but you can run this all by an IP attorney in your area for another opinion.

 

[FlyingRon]

NO need to guess about it. Microsoft is quite clear as to how they believe their trademarks should be used. See here https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/usage/general.aspx

 

[quincy]

NO need to guess about it. Microsoft is quite clear as to how they believe their trademarks should be used. See here https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/usage/general.aspx

I provided the same link in my post. But I agree it is a good one.

 

[dev456]

Thank you for advice. I'm from Poland, but my target audience is global. Now I'm wondering, there's Microsoft Windows, just like there is Microsoft Word. Then why can there be WordPress, shouldn't it infringe Microsoft brand? Both Word and Windows are generic I guess.

 

[quincy]

Thank you for advice. I'm from Poland, but my target audience is global. Now I'm wondering, there's Microsoft Windows, just like there is Microsoft Word. Then why can there be WordPress, shouldn't it infringe Microsoft brand? Both Word and Windows are generic I guess.

Anyone can use the word "window" or "windows" or "word" or "press." These are generic words and no one can claim them as they relate to actual windows or words or the press. In fact, there are many trademarks federally registered that use the words window and windows as it relates to (glass) window products.

However, Microsoft has a trademark on the word "Windows" as it applies to computers. It is not only a famous mark now, allowing Microsoft to stop all others from using it in a way that can dilute its value and strength or confuse consumers, "Windows" was also a strong mark when it was first registered with the USPTO. It is considered an arbitrary mark - a mark that uses a common word in an uncommon way.

At any rate, I recommend strongly that you find another mark that does not use a recognized trademark in its name. Microsoft will not be pleased otherwise.

Good luck with your web app.

 

[dev456]

So one month later I came up with a different name. The problem is that it contains "Word" in it. Would it infringe Microsoft Word the same way, or is it something different? The application is related to WordPress, hence I want to use Word as a suffix. There are some WordPress plugins which contain the prefix, for example Wordfence. Am I safe to use Word as a prefix? Thanks.

 

[quincy]

So one month later I came up with a different name. The problem is that it contains "Word" in it. Would it infringe Microsoft Word the same way, or is it something different? The application is related to WordPress, hence I want to use Word as a suffix. There are some WordPress plugins which contain the prefix, for example Wordfence. Am I safe to use Word as a prefix? Thanks.

I can't tell you if it is "safe" for you to use the word "Word" as a prefix.

If your product is a word-related product, the word "word" would have to be disclaimed as it cannot be protected from use by others. Everyone can use the word "word" to describe words just as everyone can use the word "window" to describe actual windows. If you were selling a clothing line named "Word," on the other hand, "Word" can become a protected mark as it relates to clothing.

What is more important than your use of the word "word" in your mark's name, therefore, will be the other word or words in your mark. If your trademark can confuse consumers into thinking your product is manufactured by another company with the same or similar name, then you would be infringing on the other company's trademark.

It is best to come up with a unique name for your product and concentrate on the promoting of it, so consumers start to connect the unique name to your product. Even if you have a word-related app, the app does not have to mention "word." You can call your app "Fence," for example (just as Microsoft used "Windows") and you have a unique name.

You will be best served by sitting down with an IP attorney in Poland to go over your name choices. A search should be done of trademarks already in existence in the same class of goods/services as your product.

Good luck, dev456.

 

[dev456]

It doesn't have anything to do with word, but it is a service related to WordPress, the most popular content management system. The current name I'm thinking of, gives customer a potential idea of what it could be. The app will be something completely new to the WordPress ecosystem and I should do my best to explain it's features as easy as possible and I think a matching name will play a critical role. I would call it Word + Something, where Something is directly related to what the application offers. Something is widely recognized in the computing world and it would be too general to use. I'd never come up in the search results. However when I add a Word suffix, it starts to make sense, as it will be Something for WordPress, not just Something. Also there is a problem with one worders - .com availability. I can't afford to pay thousands to buy a domain. Of course there are ways like getappname.com, but I think that a proper .com is important for brand recognition. I guess I will take the risk. Thank you very much for your help.

 

[quincy]

It doesn't have anything to do with word, but it is a service related to WordPress, the most popular content management system. The current name I'm thinking of, gives customer a potential idea of what it could be. The app will be something completely new to the WordPress ecosystem and I should do my best to explain it's features as easy as possible and I think a matching name will play a critical role. I would call it Word + Something, where Something is directly related to what the application offers. Something is widely recognized in the computing world and it would be too general to use. I'd never come up in the search results. However when I add a Word suffix, it starts to make sense, as it will be Something for WordPress, not just Something. Also there is a problem with one worders - .com availability. I can't afford to pay thousands to buy a domain. Of course there are ways like getappname.com, but I think that a proper .com is important for brand recognition. I guess I will take the risk. Thank you very much for your help.

You're welcome, dev456.

I still recommend that you have your plans reviewed by a trademark attorney in your area before investing too much time and money in a name that might create legal issues for you in the future, especially if the name you are looking at "matches" a well known name. This is where legal problems with trademarks generally arise.

I wish you good luck.

 

[dev456]

I have had a new idea. I like this one best, I really think it's great for my app. .com domain is squatted but maybe I would buy it eventually. The problem is that I have found some company using this name for their product. The product is like an interactive computer board for classroom use. So it's kinda related to computing, but it isn't software. The name is a combination of 2 words, but itself isn't a proper word. I guess I can't use it, because it isn't a generic word, right?

 

[FlyingRon]

I have had a new idea. I like this one best, I really think it's great for my app. .com domain is squatted but maybe I would buy it eventually. The problem is that I have found some company using this name for their product. The product is like an interactive computer board for classroom use. So it's kinda related to computing, but it isn't software. The name is a combination of 2 words, but itself isn't a proper word. I guess I can't use it, because it isn't a generic word, right?

Whether it is a generic word or not really doesn't enter into it too much, the issue is whether the use by the other company rises to the level of being considered a trademark and whether your use of the same mark would be considered infringing. Without the details, I'd have to guess that it probably would be. You're going to have to come up with another.

 

[quincy]

I have had a new idea. I like this one best, I really think it's great for my app. .com domain is squatted but maybe I would buy it eventually. The problem is that I have found some company using this name for their product. The product is like an interactive computer board for classroom use. So it's kinda related to computing, but it isn't software. The name is a combination of 2 words, but itself isn't a proper word. I guess I can't use it, because it isn't a generic word, right?

A combination of two words (a portmanteau word) would generally be considered a strong trademark (like Microcomputer+Software=Microsoft). Ogden Nash and Lewis Carroll writings are filled with portmanteau words. These marks are as a rule offered the greatest protection under US trademark laws (as are coined or made-up words like Kodak and Tylenol, and as are arbitrary words like Penguin for books and Diesel for clothing and Beefeater for gin).

In other words, the trademark you ran across that is a combination of two generic words does not make the trademark available for use despite its use of generic words. The combining of two generic words can, in fact, make the trademark stronger than other marks you might run across and far riskier to use for your own product.

Again the advice remains that it is always best to come up with a unique name for your product - one that is NOT in use by others (in whole or in part) - and to seek out the help of a trademark attorney in your part of the world for direction.

What might help you (and what might not ... ) is a look at the Trademark Examiner's Manual, to show you what a trademark examiner looks at when determining if a mark is eligible for registration. Here is a link to access to the Manual, offered from the United States Patent and Trademark Office: https://mpep.uspto.gov/RDMS/TMEP/current

Your struggle to come up with a good and proper name to identify your company/product is a struggle worth making. Choosing the right trademark is important. Good luck, dev456.

 

[tranquility]

Teaching us "portmanteau" but through a double-posting.

(Tried to create a new portmanteau word to describe it but all sounded insulting rather than teasing so will not.)

Posting edit:
My double vision has cleared up. Pity.

 

[quincy]

Teaching us "portmanteau" but through a double-posting.

(Tried to create a new portmanteau word to describe it but all sounded insulting rather than teasing so will not.)

Posting edit:
My double vision has cleared up. Pity.

I did have a double-posting for some reason. I deleted my post's twin but, had I realized at the time how clever a double-posting would have been for a post on portmanteau words, I might have left it in place.

There was an Ogden-Nash-worthy portmanteau word inadvertently created by a poster the other day. The word was "requespionage." I believe Silverplum came up with a definition that seemed to suit the new word well.

It is curious to me, with all of the words in the English language and all of the possible combinations of these words, that so many companies have rather dull trademarks. I suppose it could be a company's way of avoiding the expense of advertising their unique name to consumers, to form the necessary product-trademark connection in consumers' minds, but I would think more companies would want to follow in the footsteps of the very successful companies (like Microsoft and Apple and Kodak) and create a distinctive name that sets them apart from the competition.