A trademark can be essential protection against rival competitors stealing a successful business plan 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.
Famous trademark cases to learn from
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 awful 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 department handle it first.
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 non-compliance after changing its name to LOUISVUI TONDAK following the first ruling.
When deciding on a trademark, ensure you’re not mirroring another company. It’s best to err on the side of caution to avoid intellectual property mistakes.
What is a trademark?
Before you get embroiled in a potential trademark infringement case, it is important to fully understand what a trademark is. A trademark is a unique word, phrase, symbol or design that represents a business and its goods or services. By definition, a trademark identifies the source of a business’s offerings, provides legal protection for the brand, and protects the business from counterfeiting or fraud.
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. [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. You can also register the trademark with your state for state-wide protection. For nationwide rights, trademark your goods or services with the United States Patent and Trademark Office (USPTO).
If you decide to trademark your small business’s brand name or logo, you will be able to file a trademark infringement lawsuit against anyone who uses your trademark or one similar to it.
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 and 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.
Chad Brooks contributed to the writing and reporting in this article.