Owning a business comes with many responsibilities that can seem a bit overwhelming at times. One of the biggest responsibilities you do not want to shy away from is making sure your business is properly trademarked.
Imagine if a competitor had a similar name and/or logo that confused consumers looking at the both of you. You could end up losing business because of it.
If your business name and/or logo is considered too closely associated with another brand, you could be embroiled in a trademark lawsuit. Such a lawsuit if you lose could cost quite a bit of money. As such, do your homework ahead of time and also keep an eye out for any trademark infringements you feel are costing you and your intellectual property business and dollars.
Among some of the more notable trademark disputes over time are:
- Polaroid vs. Kodak (1976) – You more than likely know the names Polaroid and Kodak, both synonymous with taking pictures. Nearly 50 years ago, Polaroid took Kodak to court, claiming that the latter’s line of instant cameras was an infringement on a number of Polaroid’s patents and trademarks. Polaroid claimed in court that it had the handle on instant film technology. When the dust settled, Polaroid won its case and was awarded some $925 million towards damages. Part of the ruling also stated that Kodak could not manufacture or sell instant cameras or film for a number of years. At the end of the day, even heavyweight names such as those two brands can wind up in court when intellectual property infringement is alleged.
- Apple vs. Apple Corps (1978-2007) – You undoubtedly know the Apple brand for its technological innovations. Had you heard of Apple Corps? Apple Corps was a multimedia company that got its start from members of the iconic band The Beatles. The “Apple” trademark became a point of contention between the two brands. The case ended up with an out of court settlement, with Apple Inc. honoring its word to avoid any involvement in the music industry. Flash-forward a few years later and the case reemerged. That is when Apple inc. dipped its toes into the multimedia and music-related products areas. More legal battles and settlements ensued with both brands coming to a definitive deal as 2007 rolled around. The better-known Apple Inc. paid Apple Corps $500 million to gain exclusive rights for the “Apple” trademark. Among the lessons here is that disputes that go on for years and years can not only cost big dollars, they can damage a brand’s name. All the more reason to settle such differences sooner than later.
- McDonald’s vs. McCurry (2001) – Who hasn’t heard of the McDonald’s brand not only in the United States but globally? The iconic brand took a restaurant in Malaysia to court in 2001 over what it claimed was trademark infringement. Named McCurry, the restaurant was said to be too closely affiliated with the McDonald’s brand. The goal for McDonald’s was to not allow the prefix “Mc” to be used. The Malaysian court first ruled in favor of the country’s restaurant, claiming “Mc” was an all too common prefix and it did not think consumers would confuse the two. Ultimately, the better-known McDonald’s came out the winner and the Malaysian restaurant not only had to change the name of its business, it paid damages to the fast-food Goliath. One lesson to take away from this case is companies such as McDonald’s have plenty of financial and other resources to go after much smaller brands when they feel threatened.
- Adidas vs. Payless Shoes (2001) – When it comes to footwear, there are various brands and styles. A legal battle took place between Adidas and Payless Shoes when the former, known for its recognizable three-stripe logo, went to court and sued Payless Shoes, stating the company was selling and making money off of footwear that featured two and four stripes. Following several years of litigation, Adidas came out ahead and was victorious. In the process, it garnered a $305 million settlement. The lesson here was even small alterations or copies by another brand can harm your company’s reputation. When it does, your intellectual property is the first to suffer.
- Adidas vs. Skechers (2015) – Years later, Adidas also went to court with Skechers. Both big-time brands in the footwear industry, Adidas initiated a lawsuit claiming that a number of Skechers’ shoe designs were infringing on the iconic three-stripe trademark put forth by Adidas. As Adidas saw it, there was confusion among consumers due to such designs. Once a lengthy legal tussle had taken place, a U.S. federal court sided with Adidas. In the process, the company came away with $25 million in damages. An injunction was also put in place that prevented Skechers from selling the shoe designs determined to be an infringement. Following this case, you can see that trade dress protection covering the overall look and design of a product can in be a strong tool when filing a trademark infringement lawsuit.
- Tiffany & Co. vs. Costco (2013) – Well-known luxury jeweler Tiffany & Co. took well-known retailer Costco to court, alleging that the company committed trademark infringement when it sold “Tiffany” engagement rings minus authority to do so. Three years later, a court backed the claim by Tiffany & Co., ruling that Costco had to pay nearly $20 million in damages. The ruling stated Costco was guilty of misleading the public and that it tarnished Tiffany’s brand.
- Starbucks vs. Black Bear Micro Roastery (2000) – How many consumers have not heard of Starbucks? Chances are those numbers are small. At the turn of the century, Starbucks went to court with Black Bear Micro Roastery, a small business with ties to New Hampshire. Starbucks initiated court proceedings in a trademark infringement lawsuit case against the lesser-known company, stating the term “Black Bear” in the brand’s name and the tools it used to market its company could lead to confusion among consumers who likely knew Starbucks’ well-known bear-like image in its logo. Following a notable court fight, Black Bear Micro Roastery said yes to altering its branding and marketing items. Take away the lesson such disagreements can come to the forefront even if companies are operating in other market segments or the consumers they are looking to sell to are in fact different.
- Kylie vs. Kylie (2014) – What’s in a name came to bear fruit when musician Kylie Minogue objected to entrepreneur Kylie Jenner trying to trademark the name “Kylie” and have it all to herself for her various business needs. Minogue decided to block and object the application, especially since she had been using the first name for a variety products dating back to the mid-1990’s. With the idea that Jenner was going to market and sell perfumes and cosmetics under the name Kylie, the United States patent and trademark office got involved, turning down her application. While the two celebrities would go on to reach a deal in 2017, a sizable amount of legal time and costs ensued. The lesson here is always do your due diligence and make sure a name or other such property is not taken by someone else. This can save you time and money at the end of the day.
If you have questions on trademarks and how they can impact your business and intellectual property, talk to a trademark attorney who has the knowledge and skillset to help you avoid a potentially costly decision.
