Use of Microsoft Trademark in Product Name

Question

I am developing Add-Ins that extend Microsoft Office applications with additional functionality.

As such, I am looking for product names to advertise these Add-Ins.

Here's a very crude example of two such Add-In names/logos - one for Project and one for Outlook

[LOGO] MyBrandName

                for Project®

[LOGO] MyBrandName

                for Outlook®

The first line is in large typeface and not using Microsoft's logos or anything like that. That said, the [for ProductName®] will be written in a small box that is roughly in the color of that product (i.e. a blue for Outlook; but not the exact same color code).

I had a read through Microsoft's brand/trademark use guidelines: https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/usage/general.aspx

You may not: use the trademarks in the name of your business, product, service, app, domain name, social media account, or other offering

This is pretty clear.

But the "App Guidelines" state:

Your registered publisher name and everything about your app—name, logo, description, screenshots—must be unique and free of Microsoft trademarks unless (1) you’ve secured permission from Microsoft through a license or equivalent (though such licenses are not generally available in this context); or (2) you’re only using a Microsoft trademark (not including logos) to describe that your product is designed to work in conjunction with a Microsoft product or service and as long as your app logo and/or name (1) does not suggest/give the impression your app is actually published by, affiliated with or endorsed by Microsoft; and (2) denotes your own unique brand so as to clearly signal to users that there is no affiliation or endorsement by Microsoft.

Now things are less clear.

My only reason for the use of "Outlook" or "Project" as a small component of the logo's subtitle and product name is to signal to users its compatibility with said Office products.

Of course, YANAL, but perhaps someone has some additional insights to share. I know that many businesses use this type of naming convention in marketing their products as being part of and extending the Office eco-system.

I might add that these Add-Ins are intended to be commercial and that none of Microsoft's trademarks are used in domain names - just as a small addition below the logo as outlined above.

The website, "About Dialog" and so forth, will all state that:

Microsoft, Microsoft Outlook, Microsoft Project and the Office logo are trademarks or registered trademarks of Microsoft Corporation in the United States and/or other countries. All other trademarks are property of their respective owners. Microsoft is not affiliated with [MyBrandName] and does not endorse this product.

With the exact trademarks listed as here: https://www.microsoft.com/en-us/legal/intellectualproperty/trademarks/en-us.aspx

Question: is this use of Microsoft trademarks allowable?

I appreciate that, unless an authoritative source can be found that pertains to Office Add-Ins specifically, it may be hard/impossible to definitively answer questions around the legality of this.

If that is the case, perhaps someone can share some guidance around acceptable use and likelihood of Microsoft not taking kindly to a situation like this.

With Office Add-Ins, the situation is such that they benefit the Office platform as a whole - after all, Microsoft has invested significant resources in opening-up its platform via the VSTO/Add-In API.

Personally, I imagine no issues as long as such Add-Ins/products make it clear that they are not affiliated with or endorsed by Microsoft, and as long as such Add-Ins have their own brand identity that is clearly distinguished from that of Microsoft/Office (although they refer to specific Microsoft products as a means of signalling compatibility; like many Add-In developers already do).

Add to that the fact that Microsoft's "App Guidelines" make this exact same point - just that these guidelines refer to "Apps" (probably Windows Universal Platform Apps) and not Office Add-Ins.

Sub-question: can you imagine a worse scenario than Microsoft sending a Cease and Desist notice?

In that case, I can imagine re-branding to "MYBRAND for E-Mail" as the logo/name and a textual reference to "The [MyBrand for E-Mail] Add-In for Microsoft® Outlook®.".

If there is any potential of this constituting an infringement on Microsoft's trademarks, I will rather re-brand (before going live) my Add-Ins to "MyBrand for E-Mail", but would still like to use textual references to "[MyBrand for E-Mail] - the team management Add-In for Microsoft® Outlook®." (with the usual trademark disclaimer "[...] not affiliated with/endorsed by [...]" in the footer).

Would this constitute an infringement?

Answer 1

Rather than saying "for Project®" which might fairly be interpreted to indicate an affiliation with Microsoft, you ought to say something like "intended to be compatible with Project® (not affiliated with or endorsed by Microsoft)."

can you imagine a worse scenario than Microsoft sending a Cease and Desist notice? In that case, I can imagine re-branding to "MYBRAND for E-Mail" as the logo/name and a textual reference to "The [MyBrand for E-Mail] Add-In for Microsoft® Outlook®.".

What is the worst case scenario?

You could be sued by Microsoft for trademark infringement under the Lanham Act and if you lost, forced to change your product name and to destroy all existing inventory, forced to disgorge all profits you have ever made from selling your product ever, forced to pay their attorneys' fees and costs (which won't be cheap) in addition to your own legal team, have your products seized and destroyed when imported by customs agents follow an ex parte court hearing (i.e. one you had no notice of) secretly brought by Microsoft, and forced to pay punitive damages equal to double the profits you made in addition to the profits themselves. You might not even be able to discharge the judgment against you by going bankrupt and the punitive damages would probably not be tax deductible.

Microsoft has every right to do this even if you fully comply with their cease and desist letter.

A criminal trademark prosecution would be unlikely in this fact pattern.