Microsoft could face trademark challenge over 'Vista'

The founder of a Redmond, Washington-based custom application and services provider is considering taking action to challenge Microsoft over the naming of the next version of the Windows operating system (OS).

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John Wall, chief executive officer of Vista, said his company is "considering all of its options" for a potential case against Microsoft because of the company's choice of the name "Windows Vista" for the previously code-named Longhorn version of the OS.

Wall said the naming of Windows may violate a trademark his company has and potentially create confusion over the software and services Vista provides. Vista is headquartered just down the road from Microsoft and provides small businesses with online information systems, including custom applications, as well as with consulting services.

"If people call it Windows Vista, that’s not a problem," he said. "If people call it 'Vista,' that confuses it with our business and what we do."

Wall said Vista will be analyzing traffic to its Web site, http://www.vista.com, to see what effect the "Windows Vista" name may have on visitors to the site. If the effect is significant -- that is, if a surge of visitors come to Vista.com looking for information about Windows Vista -- the company may decide to take legal actions over the trademark.

One of the key tests for whether a new trademark can be challenged or not is if it creates confusion over another company's products and services, said Bill Lozito, president of Strategic Name Development, a brand naming consultancy in Minneapolis.

Vista potentially has a good case against Microsoft because its software and services are similar to what the software giant offers, he said. Because Microsoft is a larger, more recognizable company, the name confusion might drive some of Vista's potential customers to Microsoft.

"The ramifications are [customers] no longer associate you as this independent company and think you're a part of Microsoft," Lozito said. "If they need the service you’re providing, they’ll call Microsoft instead of you. You're going to get drowned out."

The issue for Vista is particularly prickly because the company deals mainly in the small business market, a segment where Microsoft also figures prominently, he added.

Wall's company is not the only one that might have a case against Microsoft in the naming of the next version of Windows. There are at least two other software companies, both named Vista Software, that might have a good argument against Microsoft's using the Vista moniker, Lozito said.

"Anyone using that name that’s doing business in this category runs the risk of being overshadowed by Microsoft Windows Vista," he said.

However, the presidents of the two companies called Vista Software, both of which provide add-on technology for Microsoft products, separately said their companies likely will benefit from Microsoft's choice of name for the next version of Windows because of their current affiliation with the Redmond, Washington-based company.

"Fortunately for our small company, all of our products are targeting the Windows platform, so I'm anticipating that the new 'Windows Vista' name will have a positive effect for us," said Steve Nerby, president of Tucson, Arizona-based Vista Software, which provides automated productivity tools for Windows. "It allows our products to be automatically associated with the world's most popular operating system. As long as we don't get misdirected technical support e-mails asking how to configure someone's printer, it should work to our benefit."

Anthony Carrabino, founder, chief executive officer and president of Lorant Corp.'s Vista Software in La Jolla, California, shares Nerby's sentiment. Carrabino said he "couldn't be happier" about Microsoft's choice of a name because his company's main product, Vista DB, is a database engine specifically engineered for Windows developers. In fact, the company has been working on the Longhorn release of Vista DB for more than three years.

"The ramifications are so huge I can't get my head around it," Carrabino said of the naming of Longhorn 'Windows Vista.' "I don’t think it’s going to hurt us in the least bit ...The fact that we’ve been focused on getting into the Longhorn market and well-situated for it is good for us. It's a nice payoff."

Carrabino said the hits to his company's Web site have quadrupled since Friday when Microsoft announced the new name for Windows, and he hopes this increased traffic will introduce developers "in droves" to Vista Software's products.

A Microsoft product manager said his team came up with the name because it reflects the three main design principles of the next version of Windows, which is expected to be available in the last calendar quarter of 2006.

Greg Sullivan, group product manager with Microsoft's Windows client group, said Microsoft has focused on making the next version of Windows provide users with a higher level of confidence in the system; give them a clearer view of their information and files; and help them be more connected to other systems and other modes of communication. "When we take those all together, when I really think about my view into this world, my personal view of all this digital content, this is how we arrived at the name 'Vista,'" he said.

Microsoft plans to make the first beta of Windows Vista available Aug. 3.

The Vista case is not the first time Microsoft has decided on a product name that conflicted with an existing trademark. In 1998, Microsoft paid Internet service provider (ISP) Synet $5 million for the rights to the name "Internet Explorer" because the ISP had that name trademarked since 1995.

Strategic Name Development's Lozito said that Microsoft may end up in a financial settlement with Vista over the Windows Vista name to clear up whatever legal question might be hanging over the trademark.

"The thing with trademarks is, you have to defend them," Lozito said. "This could be another example of Microsoft being heavy-handed, as in, 'We like this name, this small company has it, let them fight for it.'"