Trademarking Just Your Company Name Is Not Enough
Look at the above image. At first glance, they look like the brands you’re familiar with. But if you look closer, you’ll realize they’re knockoffs: Club Cola instead of Coca Cola. Right instead of Sprite. Monsoon Dew instead of Mountain Dew. Fancy instead of Fanta.
Trademarks that protect the brand name would not protect against these kinds of copycats who copy the look of a product.
To protect against these types of infringers, you would need to trademark a name AND logo for your business in separate trademark applications.
Trademark a Name and Logo to Protect Your Brand Reputation
The purpose of a trademark is so customers can reliably identify the source of goods or services they buy. Companies can then build the reputation of their brand, so customers will choose to buy from them instead of their competitors.
If another company uses your trademark, either your name or logo, your company can lose sales and reputation. When customers buy from a competitor because they’re confused by the infringement of your trademark, you lose sales that should have been yours. And bad knockoffs using your trademark can ruin your reputation in the marketplace if customers incorrectly associate their bad experience with your company.
But you first need to apply to trademark a name and logo for your business if you want to maximize your ability to assert your rights and stop competitors from infringing on your brand.
A Logo is a Brand’s #1 Identifier
75% of people recognized a company solely from its logo. It takes just 400 milliseconds for our brain to recognize a logo and respond. Brands that we like trigger activity in the part of the brain associated with positive emotions and self esteem.
How Easily Can You Recognize These Logos Even Without the Brand Name?
(Mouse Over Each Image for the Answers)
You can see that logos alone can readily identify companies even without including the trademarked name. Failing to trademark a name and logo leaves your business vulnerable to copycats who could use your logo with a different name.
Separately Stealable Needs to Be Separately Protected
When creating an intellectual property strategy for your company, it’s important that every element that is separately stealable is also separately protected. For patent protection, that means each element of an invention that can be separately copied, must be separately patented. For trademarks, that means you need to separately protect all your branding: separately trademark a name and logo, as well as any slogans or catch-phrases.
Requirements to Assert Your Trademark Rights in Court
What is Trademark Infringement?
According to the USPTO, “trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”
To support an infringement claim in court, a trademark owner must prove:
- that it owns a valid trademark
- that it has priority (that its rights are “senior” to the infringer)
- that the infringer’s mark is likely to cause confusion in the minds of consumers about the source of goods or services
The best way to prove both that you own a valid trademark and the priority date you acquired that trademark is to file an application to trademark a name and logo. Obtaining a federally registered trademark gives you greater protection, including notice of the federal registration, presumption of validity, nationwide protection, the opportunity to gain incontestable status after five years on the federal trademark register, and the use of the ® symbol.
Proving Confusion in the Marketplace
Courts have generally looked at the following eight factors to determine whether there is a likelihood of confusion among consumers:
- the similarity between the two marks (including the look, phonetics, and underlying meanings)
- the similarities of the goods and services involved (including marketing channels used)
- the strength of the trademark owner’s mark
- any evidence of actual confusion by consumers
- the intent of the infringer in adopting its mark
- the physical proximity of the goods in the retail marketplace
- the degree of care likely to be exercised by the consumer
- the likelihood of expansion of the product lines
In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution.” If the infringer’s mark “blurs” the trademark’s distinctiveness or “tarnishes” the trademark’s image by connecting it to something distasteful or objectionable, the strength or value of the trademark owner’s mark is “diluted” — even if there is no likelihood of confusion.
Remedies Available for Trademark Infringement
If a trademark owner successfully proves infringement, available remedies include:
- a court order (injunction) that the infringer stop using the trademark
- an order requiring the destruction or forfeiture of infringing articles
- monetary relief, including infringer’s profits, any damages sustained by the trademark owner, and the costs of the lawsuit
- an order that the infringer pay the trademark owner’s legal fees.
Trademark Infringement Lawsuits Based on Logos
7-Eleven vs Super-7
7-Eleven sues Super-7 for trademark infringement and dilution and unfair competition. The lawsuit claims that Asfand Khan, independent convenience store operator and owner of Super-7 Food Mart LLC in New Salem, PA, “intentionally adopted the Super-7 name, mark and logo for convenience-store services to trade upon the fame and goodwill represented by 7-Eleven.” 7-Eleven also alleges that Khan adopted the number “7” displayed in the color red “with an intent to knowingly copy the 7-Eleven name, mark and logo.” Khan said the “7” on his signs has been there since he began leasing the property and he plans to take the signs down.
In-N-Out Burger vs In-N-Out Cleaners
In-N-Out Burger has sued a Wichita, KS dry cleaner for allegedly ripping off the famed fast food company’s logo. In-N-Out Burger alleges trademark infringement and dilution of a distinctive mark, as the two companies share not just a name, but a nearly identical red-and-yellow logo with matching font. Even though In-N-Out Burger does not currently have any locations in Kansas, some burger-seekers said they were disappointed when they confused the dry cleaning business with an In-N-Out Burger location, court documents say. According to the lawsuit, In-N-Out Burger is seeking punitive damages and requests In-N-Out Cleaners “to deliver for destruction any and all signs or other advertising material that use the words In-N-Out.” The dry cleaners may also be forced to pay royalties and change its name as well as its logo.
With such an iconic logo, and ubiquitous locations throughout the world, it’s not surprising that Starbucks has filed many lawsuits to defend its trademarks and branding. The Global brand has racked up both wins and losses in its war against infringers.
Black Bear Micro Roastery: Charbucks
From 2002-2013, Starbucks challenged Black Bear Micro Roastery for using the word “Charbucks.” Although the words sound similar, Starbucks failed to convince the court that consumers were confused about the source of the goods. Black Bear was permitted to continue using “Charbucks” for its own coffee blend.
In 2003, Starbucks challenged El Freya for their use of a similar looking logo for Starpreya coffee. The court established that “Star” is a generic word and the words “Bucks” and “Preya” do not refer to any specific concepts that can be compared. The court therefore ruled that the two marks were not the same or similar and therefore there was no infringement.
Not all infringers were as lucky as the previous two. Starbucks won against the following companies, who were forced to change their logos.
In 2003, Indian business Sardarbuksh Coffee & Co. was found to have infringed Starbucks’ trademark rights and was ordered to change their name and logo.
In 2013, an EU appeal court ruled in favor of Starbucks, declaring that the similarity between the Coffee Rocks mark and the Starbucks logo was substantial. Although the similarity may not be glaringly obvious, the circle within a circle, the identical word Coffee and a similar color scheme meant that Starbucks won their lawsuit.
Starbung Coffee vendor settles trademark dispute out of court. A street stall coffee vendor in Bangkok has dropped his “Starbung Coffee” signboard after Starbucks took him to court for trademark infringement.
Paramount vs McDowell’s Pop-Up Restaurant
In a strange case of life imitating art, Paramount sued the company behind a McDowell’s pop-up restaurant, citing “Coming to America” infringement.
In the 1988 Eddie Murphy film, the McDowell’s restaurant was a running joke, an almost identical competitor of McDonald’s. The restaurant owner, Mr. McDowell, points out the differences between his restaurant and McDonald’s:
- “They’re McDonald’s – I’m McDowell’s.”
- “They have the Golden Arches – I have the Golden Arcs.”
- “They got the Big Mac – I have the Big Mick.”
- “My buns don’t have sesame seeds on them.”
The joke, of course, is that all of these differences are so insignificant, McDowell’s is definitely infringing on McDonald’s trademarks and a lawsuit is inevitable.
Ironically, the real life pop-up restaurant of McDowell’s did get sued, not by McDonald’s, but by Paramount for infringing on the movie’s depiction of the fake restaurant. The lawyer representing the pop-up restaurant said: “The McDowell’s pop-up was a creative celebration of a fake restaurant. JMC is disappointed by Paramount’s heavy-handed response to fans of its films.”
Parody Defense to Trademark Infringement
The North Face vs. The South Butt
Jimmy Winkelmann mocked the ubiquitous North Face fleece jackets found on his high school campus by launching his own competing apparel line, called “The South Butt.” Lawyers for The North Face sent a cease and desist letter requesting that Winkelmann stop using The South Butt name and logo.
Winkelmann’s defense relied on his claim that The South Butt represented a protected parody of The North Face’s trademark rights. Ultimately, The North Face settled its lawsuit against The South Butt. Terms were not disclosed, but The South Butt was still offering its clothes on its website after the settlement agreement.
Louis Vuitton v. Chewy Vuiton
Luxury handbag maker Louis Vuitton sued Haute Diggity Dog in 2006, claiming they infringed on its trademark with furry “Chewy Vuiton” dog toys. Vuitton lost their lawsuit and appeal, the judge finding that Chewy Vuiton is “a joking and amusing parody” that “pokes fun at the elegance and expensiveness of a Louis Vuitton handbag.”
Professional Help to Trademark a Name and Logo
Call for your Free Phone Consultation with Patent and Trademark Attorney Russ Weinzimmer: (800) 621-3654.
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