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Trademark Examples: Learn From These Trademark Infringement Cases
You could be committing trademark infringement without knowing it. Here are six trademark cases to learn from.
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A trademark can provide essential protection against rival competitors stealing your brand identity or reputation without paying compensation. Trademark infringement frequently occurs 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.
In this article, you’ll learn more about some of the memorable instances of trademark infringement in recent years and how you can protect your business from facing costly legal battles.
Trademark infringement examples to learn from
If one company uses a word, logo or design that another company has trademarked, this is a trademark infringement. Firms defend their trademarks to protect their brand reputation and so rival companies can’t mislead customers into thinking they’re buying from or dealing with a trusted brand. Below, learn more about six recent high-profile trademark disputes and infringement cases.
Marvel and DC Comics over the word ‘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. Some see this campaign as trademark bullying from two comic book titans, but no one has made a real effort to contest their ownership of the word “superhero” as a trademark.
The two companies have certainly raised hostility among indie publishers and comic book fans. Is this litigiousness 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, Marvel and DC Comics might come knocking with an unpleasant legal surprise.
Apple Corps v. Apple Computer
Who has the right to trademark the word “apple”: the Beatles or Apple Inc.? The Beatles came first with the music company Apple Corps. Eight years later, Steve Jobs introduced Apple Computer (now 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, if your company has anything to do with either music or computers, stay far away from the word “apple.” Try another fruit. Better yet, get a legal services company to handle your trademark research, application and maintenance to avoid any legal hassles.
Jack Daniels and Patrick Wensink
The noted distiller discovered that a book cover by popular author Patrick Wensink looked just 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; if he did, Jack Daniels would happily contribute financially toward the change.
Wensick publicized this letter on his website and it went viral, garnering Jack Daniels a ton of positive publicity. If your business is considering taking someone to court over trademark infringement, think about letting your marketing team handle it first.
Wrigley’s Doublemint
The Wrigley Co. wanted to trademark the name “Doublemint,” which seems reasonable enough. But in Europe, it can’t. The ruling against Wrigley stated that the word “Doublemint” lacks an imaginative element. In contrast, Procter & Gamble was able to trademark its product name “Baby-Dry” with no difficulty in Europe.
If you plan on marketing in Europe, you should become familiar with the Madrid Protocol, which explains how trademarks are registered and enforced in the European Union.
Academy of Motion Picture Arts v. GoDaddy.Com Inc.
In 2010, the Academy Awards and domain retailer GoDaddy entered a five-year infringement battle. The Academy attacked GoDaddy for allowing customers to buy domain names, such as 2011Oscars.com, that were “confusingly” similar to the Academy’s trademarks so that GoDaddy could profit from those who wanted to park on the name. [Learn how to choose a domain name for your business.]
While the Academy found 57 “similar” domains that could cause confusion, the judge ruled GoDaddy did not have ill intent to profit from those sales. However, the entire process lasted five years and became a financial burden for both parties.
Louis Vuitton v. Louis Vuiton Dak
Although the brands sit in two very different spaces, Louis Vuitton and Louis Vuiton Dak endured an international infringement battle. Louis Vuitton, the fashion designer, won the infringement case against Louis Vuiton Dak, the South Korean fried chicken restaurant; the court ruled the restaurant’s name and logo are too similar to the designer’s brand.
Additionally, the court ordered the restaurant to pay $14.5 million for noncompliance after changing its name to LOUISVUI TONDAK following the first ruling. “Don’t mess around when there’s a famous mark like Louis Vuitton at play, those markholders vigorously protect their IP,” advised Mika Mooney, trademark attorney and founder of Mika Mooney Law. “In such a case, they’re entitled to a broader scope of protection, even in the absence of confusion or competition. The famous mark is afforded greater protection from any use that may dilute its distinctiveness.”
What is a trademark?
To avoid any mess with trademark issues, it’s crucial to know what a trademark means. Simply put, a trademark is a special word, phrase, picture or design that signifies your business and what you sell or offer. Essentially, it acts as an identifier for where your goods or services come from, gives legal safeguards to your brand, and shields your business against fake or fraudulent copies.
Businesses don’t legally own the word or phrase they’ve trademarked; instead, they own how it’s used in relation to their business. For instance, if a coffee shop uses a specific logo for its shop, another cafe can’t use a similar logo, as the logo is meant to help the first business stand out in its market. However, a non-coffee business can use a similar logo without an issue. [Read related article: Important Things to Do After Your Trademark Is Registered]
When should you trademark something for your business?
You’re not required to register your trademark to gain rights to it. In fact, as soon as you start using it, you technically own the trademark thanks to common-law protection, which safeguards it locally. However, you should consider trademarking something for your business when you have a unique brand name, logo, slogan or other branding element that you want to protect from being used by others.
Specific instances that may require trademarking include starting a new business, launching a new product or service, expanding internationally or creating a strong brand. You may also consider trademarking if you simply want to avoid legal issues in the future.
You can register the trademark with your state for statewide protection. For nationwide rights, trademark your goods or services with the United States Patent and Trademark Office (USPTO).
How to file for a trademark
To register a trademark, the USPTO recommends taking the following steps:
- Decide whether a trademark is right for your business. As noted above, not every business needs to register a trademark to protect its brand name or logo on its goods or services. However, the process is simple and can offer broad protection for your business.
- Prepare your application. This involves selecting a mark and mark format, identifying the goods or services you want to be covered, searching through existing trademarks to ensure yours is not already taken, and identifying your filing basis.
- Set up an account on USPTO. Once you set up a USPTO account, you can fill out and submit your application.
From there, you might wait a few months before hearing back about the status of your application. You’ll work with an assigned USPTO examining attorney to complete the process.
According to Darrell White, partner at Kimura London & White LLP, working with the USPTO requires both legal precision and patience. “While the process is largely administrative, having a professional who understands procedural nuances and office actions can make the difference between a successful registration and a rejection.”
There is no fast-tracking system for trademark applications, according to Kristin Grant, founder and managing partner at Grant Attorneys at Law. She told business.com that the USPTO will sometimes consider expediting an application via a petition when there are extraordinary situations, such as pending litigation involving the mark or counterfeiting issues. Grant recommended planning ahead and submitting trademark applications well before launching new branding or products to avoid potential pressures relating to timing.
How to check if your trademark is already taken
Before applying for a trademark, you need to check that your chosen brand name, logo or slogan is available. Grant told us about common pitfalls business owners face during this process: “Business owners may limit their searches to exact matches or a single trademark class, but this may not provide an accurate picture of the risk.
“When conducting a trademark clearance search, even marks with different spellings but similar pronunciations or appearances could pose problems,” she said. “For example, ‘Kafey Korner’ and ‘Cafe Corner,’ used in relation to related goods or services, could be considered confusingly similar despite the spelling differences.”
Mark Trenner, founder at iPatentAttorney, advised, “You should always check for existing trademarks before filing. The US Trademark database is free and offers several ways to search pending and registered trademarks, including Basic and Expert modes and various filters and tools such as searching design codes for designs and logos.”
Mark Fairlie contributed to the reporting and writing in this article.
