Trademark Examples: Learn From These Trademark Infringement Cases

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. 

Trademarks come in various forms across different categories:

• Logos: Visual symbols like Nike’s swoosh, Apple’s bitten apple or McDonald’s golden arches
• Slogans: Memorable phrases such as Nike’s “Just Do It” or McDonald’s “I’m Lovin’ It”
• Sounds: Audio signatures like the Intel chime or NBC’s three-note sequence
• Colors: Distinctive color combinations like Coca-Cola’s red and white or Tiffany & Co.’s specific shade of blue

Famous trademark examples in business

Famous trademarks are iconic and immediately connect a product or service with its source. These trademarks receive enhanced legal protections from infringement and broader exclusive rights due to their widespread recognition.

Examples of globally recognized famous trademarks include:

• Coca-Cola: Established in 1886, this beverage brand uses its distinctive red and white logo and is worth more than $47 billion.
• Nike: Founded in 1964 (as Blue Ribbon Sports), this athletic apparel leader introduced its famous swoosh logo in 1971 and generates billions in annual revenue.
• McDonald’s: The world’s largest fast-food chain, founded in 1940, introduced its golden arches logo in 1962 and operates over 40,000 restaurants in more than 100 countries.
• Google: This technology giant’s trademark has become so famous it’s practically synonymous with internet searching.

These trademarks became famous through extensive advertising, consistent use over many years and successful marketing campaigns that helped spread their recognition globally.

Trademark infringement examples

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. 

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.

Starbucks v. Obsidian Group

Starbucks filed a trademark infringement lawsuit against Coffee Culture’s parent, Obsidian Group, for launching a drink called the “Freddoccino,” alleging that the name contained enough similarities to their trademarked “Frappuccino” to cause confusion in the marketplace and diminish Starbucks’ brand equity. The lawsuit alleged that both beverages have almost similar names with the same number of syllables and similar endings, which could mislead consumers.

Starbucks additionally claimed that Coffee Culture created deceptive packaging to make it appear the term “Freddoccino” had a registered trademark when it did not. The case was settled out of court in Starbucks’ favor, with the smaller coffee shop agreeing to stop using the “Freddoccino” name and changing it to “Freddo”.

Adidas v. Forever 21

In 2017, Adidas filed a lawsuit against Forever 21 and its suppliers in Oregon for using Adidas’ registered “three stripe” trademark on track pants and shorts. The complaint alleged trademark infringement and dilution, unfair competition and deceptive trade practices.

Adidas characterized Forever 21’s behavior as a violation of “repeated contractual promises to respect Adidas’ trademark rights” and argued that even if the three-stripe design were being used only ornamentally, it remained “a strong and famous source indicator” worthy of protection. The brands reached an out‑of‑court settlement in late 2017; Adidas’s complaint emphasized the Three‑Stripe mark’s fame supported by substantial advertising and promotion.

Famous copyright cases that shaped IP law

While trademarks protect brand identifiers, copyright law safeguards original creative works, and these landmark cases have established crucial precedents that continue to influence intellectual property protection in the digital age.

Sony v. Universal (1984)

Sony Corp. of America v. Universal City Studios, commonly known as the Sony Betamax case, was a landmark Supreme Court decision that established the “Sony Betamax doctrine” for determining liability for copyright infringement involving new technologies. Universal City Studios and Walt Disney Productions filed a lawsuit against Sony, alleging that the sale and distribution of the Betamax VCR constituted contributory copyright infringement by enabling users to make unauthorized copies of copyrighted television programs.

The Supreme Court held in 1984 that a company was not liable for creating a technology that some customers may use for copyright infringing purposes, so long as the technology is capable of substantial non-infringing uses. This ruling has sheltered a wide array of technology innovators from lawsuits by the entertainment industries.

Harper & Row v. Nation Enterprises (1985)

Harper & Row v. Nation Enterprises was a landmark Supreme Court copyright case where public interest in learning about a historical figure was held not to be sufficient to show fair use of copyrighted material. The Nation magazine published 300 to 400 words of verbatim quotes from President Gerald Ford’s forthcoming memoir without permission, causing Time magazine to cancel its exclusive excerpt contract.

The Supreme Court rejected The Nation’s fair use defense, holding that the right of first publication was important enough to find in favor of Harper & Row, even though Ford was a public figure and his account of pardoning Nixon was of great public interest.

Authors Guild v. Google (2015)

After a decade of court battles, Google’s massive book-scanning project was deemed legal in 2015 when a three-judge panel in the Second Circuit ruled that digitizing library books fell within fair use boundaries. Google had scanned tens of millions of books.

The Authors Guild argued that Google was guilty of copyright infringement for scanning books without permission, while Google claimed that digitizing books into searchable snippets had transformed the material. The court found that snippet view produces discontinuous, tiny fragments and employs safeguards to prevent meaningful substitution and market harm.

Landmark trademark cases and lessons

These landmark cases offer valuable insights into how businesses can protect their brands and avoid costly legal battles, demonstrating critical principles about trademark enforcement and the risks of trademark bullying.

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.

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. 

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.”

How businesses can avoid trademark infringement

Proactive trademark protection through comprehensive clearance searches, early registration and continuous monitoring can help businesses avoid costly legal battles and protect their brand investments.

Conduct thorough clearance searches.

Before applying for a trademark, you need to check that your chosen brand name, logo or slogan is available. Kristin Grant, founder and managing partner at Grant Attorneys at Law, told us about this common pitfall 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, patent attorney and founder of Trenner Law Firm, 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.”

Register early and monitor continuously.

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
• Creating a strong brand

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).

To register a trademark, the USPTO recommends taking the following steps:

1. 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.
2. 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.
3. Set up an account on USPTO. Once you set up a USPTO account, you can fill out and submit your application.

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, he said.”

There is no fast-tracking system for trademark applications. According to Grant, 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. Plan ahead and submit trademark applications well before launching new branding or products to avoid potential pressures relating to timing.

Mark Fairlie contributed to the reporting and writing in this article. Source interviews were conducted for a previous version of this article.