In 2014, the U.S. Patent and Trademark Office (USPTO) processed 455,017 trademark applications.
A trademark can be an important protection against rival competitors stealing a successful business plan without paying compensation.
Trademark infringement occurs frequently in the business world. Not every company will pursue legal action to protect their trademarked product or services every time it happens, but they do it often enough to teach some lessons:
1. Marvel and DC Comics Control of “Superhero”
Believe it or not, the word “superhero” is currently a trademark for both Marvel and DC Comics, and they vigorously pursue other comic book publishers in court who dare to use the word on their title pages. This campaign by the two comic book titans has been seen by some as trademark bullying, but so far no one has made a real effort to contest their ownership of the word “superhero” as a trademark.
But the two companies have certainly raised hostility among indie publishers and comic book fans. Is it worth the animosity and expense? In the meantime, don’t include the word “superhero” on the label of any of your products or services; otherwise you might have Marvel and DC Comics come knocking with an unpleasant legal surprise.
Related Article: The In-N-Out Effect: Trademark Mistakes You Need to Avoid
2. Apple Corps vs. Apple Inc.
Who has the right to trademark the word “apple,” the Beatles or Apple Inc.? The Beatles came first, with their music company Apple Corps, and then eight years later Steve Jobs introduced Apple Inc. to the world. The two mega-corporations have battled it out in court over the years.
After the first round, Apple Inc. agreed to pay Apple Corps a cash settlement and to stay out of the music business. But with the advent of iTunes, the legal wrangling between the two giants heated up again. They reached an apparent settlement after Apple Inc. agreed to purchase Apple Corps’ trademark rights and then license them back to the music company.
As it stands now, if your company has anything to do with either music or computers you’d best stay far away from the word “apple.” Try another fruit. Or better yet, get a legal services company to handle your trademark research, application, and maintenance to avoid any legal hassles.
3. Washington Redskins
Is your trademark politically correct? It better be. The Washington Redskins recently lost their trademark protection for the team name because the USPTO ruled the name was disparaging of Native Americans. They don’t have to change the name of the team, but they have lost the ability to prevent counterfeit Redskins merchandise from entering the country and being sold. The team is currently appealing the ruling.
So, make sure your company’s trademarked product name is as inoffensive as possible. Heavily research any present and past use of what you wish to trademark before doing so. The last thing you’ll want to do is to invest in a name that you’ll only later have to abandon or change. Sensitivity is a sound financial policy when it comes to trademark names.
Related Article: Protect Your Ideas: How to Stay Away From Trademark Infringement
4. Wrigley’s Doublemint
The Wrigley Company wanted to trademark the name “Doublemint,” which, on the face of it, seems reasonable enough. But in Europe, at least, they can’t do it. The ruling against Wrigley stated that the word “Doublemint” lacks an imaginative element. Whereas, Proctor & Gamble were able to trademark their product name Baby-Dry with no difficulty in Europe.
If you plan on marketing in Europe you should become very familiar with the Madrid Protocol, which explains how trademarks are registered and enforced in the European Union.
5. Jack Daniels and Patrick Wensink
The noted distiller discovered that a book cover by popular author Patrick Wensink looked an awful lot like their trademark, so they sent him a cease and desist letter. But the letter was not framed in standard threatening legalese; instead, it was a cheerful reminder to Wensink that, as a recognized fan of whiskey, he might consider changing the cover; and if he did, Jack Daniels would happily contribute financially towards the change.
Wensick publicized this letter on his own website and it went viral, garnering Jack Daniels a ton of positive publicity. So, if your business is considering taking someone to court over trademark infringement, think about letting your marketing department handle it first.