US Trademark Office rejects Bing – “likelihood of confusion”

In a document filed this morning and mailed to Microsoft, the US Patent and Trademark Office has rejected Microsoft’s filing of “Bing” as a trademark name for “computer search engine software; graphical user interface software, namely, toolbar software for use with search engine software and websites”. A similar mark, registered to Bing Mobile Inc. is too similar,  according to the posting:

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3562956. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

The registered mark is BING MOBILE INC. in International Class 009 for “mobile phone software for a social networking service.”

The marks are similar in appearance, sound, connotation and commercial impression. The marks are highly similar in that they both contain the element BING. Applicant has merely deleted wording from registrant’s mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression.

Bing is one of the names rumored to be possible rebranded names for Microsoft’s Live Search.  Microsoft filed a trademark application for the mark on March 9th of this year, and also has a trademark application for the same computer search engine  classification for Kumo.  That application is still in process.

Whether the rejection means much in the overall plan remains to be seen, but this filing apparently can put to rest speculation that Bing will be the new name for Live Search.

Of course, we’re not lawyers or trademark experts, but the wording seems pretty clear in this filing, that Bing has been rejected.

Edit: Of course if MSFT wanted to use Bing, they could probably easily just buy the company or the name, so really probably nothing has been put to rest.  And of course they could have a whole other name planned, too.