How long have you been with Microsoft?
I’ve been with the company for six years. I came from Intel, where I was in the trademark group. When I started here, I was trademark counsel for WINDOWS and the mobility group. Two-and-a-half years ago I jumped over to the copyright and trade secrets practice, and then one and a half years ago I jumped back to the trademark group. I’ve been managing the trademark group since the summer of 2007.
How large is your trademark group?
We have 20 dedicated people for the trademark group. We’re five attorneys and 15 non-attorneys who handle trademark matters globally, all based in Redmond. There are other groups at Microsoft who handle matters that touch on trademarks, such as the anti-piracy and internet safety groups, which deal with online fraud, phishing and typosquatting, for instance. They play a collaborative part in policing spam and phishing by nefarious characters trying to leverage Microsoft’s trademarks, so we work closely with them. We do lots of online, day-to-day domain name enforcement, but the high volume matters are handled by the online safety team.
How large is your trademark portfolio?
It’s in excess of 16,000 registrations and pending applications globally, but that’s constantly in flux. With the present economic climate, we’re having our team audit our portfolio, so it may be shrinking rather than growing in the future.
Is the downturn changing your filing strategy?
We’re being very careful. Our filings haven’t gone down, but we’re being very strategic in how we file and we may be more selective about the types of products or services that leverage new brands.
In how many countries do you protect your marks?
It depends on the brand. The MICROSOFT trademark itself we protect virtually everywhere they have a registration process, but there are very few marks we protect on that level, which is what we refer to as a “scorched earth filing”. Most filings will be more strategic in nature. For instance, for a marketing tagline in the US, we may only file in the US, but for general product releases, we’ll focus on the top tier, which means filing in about 15 different territories.
Have you used the Madrid system for filing?
Madrid is something we’ve been dialing up quite a bit lately. In the past, there had been some concerns about the so-called central attack problem, but I’ve looked closely at it and I’m much more comfortable now with the costs and the filing process, especially in relation to renewals. I think Madrid will benefit companies, and the more we can get other countries to sign on, the better it will be for every brand owner.
How has Microsoft’s brand strategy evolved over the years?
At the outset of the company, there was a desire to leverage the MICROSOFT brand and to stay away from creating subsequent brands. From 2003 forward, we’ve increased the number of brands, because the company has become so diversified. We still leverage the core brands, but we’re extending into other areas, such as music with the launch of the ZUNE.
Will this continue?
It’s in our best interest to reserve new brands for the bigger bets, such as SILVERLIGHT, for example. That product was worth a new brand and putting equity behind it. We’ll continue to get new trademarks, but not every product and service is worth a trademarked name.
How large a problem is domain name infringement for you?
It’s a huge problem. We’ve been one of the most aggressive enforcers in that area and have been on the forefront in making sure our brands are protected online.
How do you do this?
Through a combination of our own investigators, being informed by a system of partners or customers and close coordination with law enforcement officials.
Are you concerned about ICANN’s proposed expansion of generic top-level domains?
We’re watching the developments very closely and working closely with ICANN on this (see box). But you can imagine, if you expand gTLDs by 300 to 500 domain names, how much online infringement is likely to increase.
Is software piracy a major issue for you as well?
Software piracy is also a huge problem. We have a dedicated team globally combating piracy worldwide. We have a software piracy team on the ground in every region of the world.
Do you protect any nontraditional marks?
We’re very active in protection of nontraditional marks. We have color, sound and three-dimensional filings. We actively encourage other patent and trademark offices around the world without protection for such marks to provide broader protection. In countries where they allow it, we have motion marks, and we have a sound brand for the WINDOWS and VISTA startup.
Do you use design rights?
Absolutely. We have significant filings in design patents and EU design rights. For instance, for VISTA’s top-tier feature iconography, we pursued design protection and trademark protection. We also have an IP policy person focused on looking into continued broader protection on the design side and we actively communicate with WIPO and others on design rights.
What change to the global trademark system would you most like to see?
The most difficult thing is that there is no harmonization on trademark laws among countries. We have to live with it, because there should be territorial limitations on IP rights, but vast differences can be difficult.
What change would you most like to see at the USPTO?
We have a great relationship with the USPTO, but the biggest difficulty is in the context of clearing new marks where there have been marks allowed to register that are descriptive. When we’re trying to clear marks on a global scale, it’s very difficult when descriptive names have been allowed through.
How often are you involved in trademark litigation?
Constantly, if you consider all the anti-piracy litigation. My team gets involved in UDRP proceedings, litigation, enforcement actions and USPTO oppositions. We also do a lot of defensive litigation. We’re often a target for trademark infringement, given who we are, and we have a separate litigation department that we work with on these matters.
What are your thoughts on the recent Tiffany v eBay ruling? Do we need legislation to clarify the liability of online platforms like eBay in policing counterfeits?
We’re a company that has online market places, but also takes advantage of platforms like eBay, so we’re unusually situated on both sides of the issue. eBay has always worked with us and I personally always lean toward having the marketplace work it out on its own, rather than implementing new legislation.
What is the biggest challenge to protecting a global brand?
I guess that the job is never done. We have to be vigilant in enforcing our global brands. Constant diligence is needed in enforcing globally and protecting internally, so that there is no opportunity for an outside actor to cause harm.
What will you be discussing during your session on trademarks and the Web 2.0 (IT50)?
We’re putting together a hypothetical scenario where a company is launching a new brand online and addressing all of the associated concerns with that, such as keywords and banner ads.
What are you looking forward to most at the Annual Meeting?
There are a lot of hot topics I’m looking forward to learning more about. The most interesting issues to me are the ones involving the Internet. For example: counterfeiting in online marketplaces, the ongoing keyword concerns and contributory liability in typosquatting. The effort to get trademark owners to move forward with proposals for new gTLDs will be another hot topic.
What do you like most about working with trademarks?
It’s fun working at Microsoft from a trademark perspective, because it’s one of the few companies that has product lines with trademarks and also an online presence, so you have to balance conflicts that arise from new technologies while being situated on both sides of a lot of issues.
I love trademarks, and having been out of the trademark world for a period, it made me understand that it’s what I want to be when I grow up. Online technology is changing constantly—there’s a need for innovation to happen and there’s a way to balance that with respect to IP rights, and we’re always walking that line.
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Microsoft weighs in on new gTLDs
In comments submitted to ICANN last year regarding the organization’s plan to open ASCII Generic Top-Level Domains (gTLDs) to the general public, Pangborn expressed the company’s concern:
"The introduction of potentially hundreds of new ASCII gTLDs is far more likely to threaten the security and stability of the Internet as a commercial platform than to ensure it. This introduction will expand the environment and opportunities for online fraud, an environment and opportunities that will almost certainly be seized upon by criminals and their enterprises."
