Filing a lawsuit is no one’s idea of a good time. Lawsuits tend to be time-consuming, messy, and lead to bad press—and that’s even before you get into the winners and losers. However, there are some situations in which filing a lawsuit is warranted, whether to make an example of a bad actor or to stop someone from tarnishing your brand name. Below, Robert McKinley, Attorney discusses five recent examples that can show when you need to file a trademark lawsuit.
The Academy Awards v. GoDaddy: Cybersquatting
Since the advent of the internet, companies have taken advantage of domain naming rights to create easy-to-remember websites. However, these transactions haven’t always been smooth—if a domain name has already been purchased, the company may be out of luck unless it can convince the purchaser to sell.
In one famous example, a former Google employee actually owned the “google.com” domain for about a minute before the transaction was reversed. Google ultimately paid the employee $6,006.13 (or “google” in numbers), then doubled this figure when the funds were donated to charity.
But even before this, in 2010, the Academy Awards was embroiled in litigation with GoDaddy, alleging that the latter’s decision to allow customers to buy similar domain names (like “2011Oscars.com” instead of “Oscars.com”) was impermissible under federal IP laws and regulations.
However, a federal judge ruled in GoDaddy’s favor, finding that it lacked the requisite bad faith to profit from the domain sales.
Marvel vs. DC Comics: What is a “Superhero”
Both DC Comics and Marvel Comics have trademarked the term “superhero”—and both are ready to vigorously litigate against any other company that uses this term without permission. As a result, some have nicknamed both DC and Marvel “trademark bullies.” However, as of yet, no other companies are willing to take DC or Marvel to the mat to contest their ownership of this specific term.
The Apple Wars
When you hear the name “Apple,” you may think of Steve Jobs or the iPhone. However, there are two major institutions that have fought over the word “apple” for many years—going back to the Beatles.
The Beatles founded “Apple Corps” music company more than eight years before Steve Jobs founded “Apple Inc.” The Beatles, expectedly, sued Jobs; but when Jobs agreed not to ever enter the music business and provided the Beatles with a cash settlement, they accepted and dropped the lawsuit.
However, this battle was renewed when Apple Inc. introduced iTunes. Eventually, Jobs had to agree to purchase the Apple trademark rights from Apple Corps, then lease them back to the Beatles.
The Washington Redskins: A Name Stripped
Though Washington’s football team had operated as the Redskins for decades, the U.S. Patent and Trademark Office (USPTO) recently ruled that the name was impermissible as insensitive to Native Americans. The Washington football team was no longer able to sue anyone who created or sold counterfeit Redskins merchandise. Though the team appealed this ruling, after several years of operating as the Washington Football Team, and now the Washington Commanders, this battle has largely ended.
Wrigley’s Doublemint Gum
Wrigley tried to trademark “Doublemint” as the name of its chewing gum, but Europe rejected this trademark, finding that the name was not creative enough. As a result, Wrigley has had to market this gum under a different name in European countries.
Factors Considered in a Trademark Infringement Case
For more than 50 years, trademark infringement cases in the Second Circuit Court of Appeals have been decided on the Polaroid factors, stemming from a case in which the Polaroid Corporation defended its trademark. (Other circuits have followed suit and adopted similar factors, such as the Third’s Circuit’s adoption of the Lapp factors in the case Interpace v. Lapp) The Polaroid factors include the following:
- How distinctive the senior (or first) user’s trademark is;
- The level of similarity between the two trademarks in question;
- How similar are the products or services the trademarks in question represent;
- How likely it is that the senior user will eventually expand further into the junior user’s industry;
- Whether the junior user began using the mark in bad faith;
- Whether customers have been confused by the similarity in the marks;
- How sophisticated the buyers are; and
- How comparative in quality are the two users’ products and services.
No one factor is determinative on the issue of trademark infringement as each case typically presents its own set of unique facts. However, if you’re contemplating a trademark infringement lawsuit, it’s worth evaluating the Polaroid factors as they apply to your situation to assess the potential strength of your case.
About the Author:
Robert McKinley is a practicing attorney, degreed Electrical Engineer, and born leader who serves his clients with integrity and an aggressive pursuit of their best interests. He graduated from Widener University School of Law, receiving his J.D. He was a member of the Moot Court Honor Society, Trial Advocacy Honor Society, and Phi Delta Phi International Legal Fraternity for Scholastic Achievement. He has built a 25-year law career specializing in intellectual property, patent & trademark litigation and local counsel.
No Legal Advice or Attorney-Client Relationship: These materials have been prepared for general informational purposes only and are not legal advice.
