Guide to Trademarks

This article is designed to be both a guide to the application of Australian and International Trademarks and also an informative overview on various case studies that can help develop the best trademark case and avoid common pitfalls.

High Profile Trademark Cases

Adidas v. Forever 21

In a move that garnered a fair amount of media interest, Adidas sued Forever 21 for the development and distribution of several products that supposedly infringed on Adidas’ longtime trademark of ‘three stripes’. The design remains the prime component of the brand’s logo and its products. At the time of the infringement, Adidas stated tremendous investments of several million dollars for the development and the protection of their world-famous logo.

Following the charge of trademark infringement, there were no public statements from either of the parties. In December, news emerged that Adidas has agreed to an out-of-court settlement with Forever 21. This also justifies the belief held by certain trademark lawyers that legal disputes can be handled through an alternative dispute resolution. This can be of benefit to both parties as the specific details pertaining to the matter remain private.

D2 Holdings v. House of Cards

Massachusetts-based D2 holdings recently filed a lawsuit against MRC II Distribution company, the brand behind the Netflix hit political thriller House of Cards. D2 has held the trademark for House of Cards for "entertainment goods and services" since 2009, which has been licensed to a gaming radio show distributed by Granary Media. MRC reportedly filed for a trademark for House of Cards multiple times for the show which premiered in 2013 and has now been renewed for a fifth season.

D2's lawsuit asks for multiple types of infringement to cease, including fan merchandise and gaming machines. It's likely that MRC was aware that D2 held the trademark, based on their repeated failure to obtain a trademark through the U.S. Patent and Trademark Office. The failure could be in the distribution company's decision to change the show's title, based on their inability to obtain a trademark.

Louis Vuitton v. Louis Vuiton Dak

In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton. The court ruled in the designer's favor after determining that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery.

The restaurant was ultimately hit with another 14.5 million fine for non-compliance, after changing their name immediately after the first ruling to LOUISVUI TONDAK. Many brands can avoid similarly expensive legal battles by avoiding mirroring their brand closely after another, even if the products and purchase channels have nothing in common.

J K Rowling v. Nancy Stouffer

The British novelist has been the victim of many copyright and trademark infringement allegations over her Harry Potter series. American author Nancy Stouffer alleged that Rowling borrowed heavily from her work Larry Potter and His Best Friend Lilly. However, the evidence was found to be fraudulent and Stouffer was fined $50,000 for "intentional bad faith conduct".

Starbucks v. Freddocino

The parent company of New York’s celebrated Coffee Culture Cafe bore the brunt of a trademark infringement lawsuit brought by Starbucks for the release of the drink ‘Freddocino’. Starbucks’ primary reservations were with the fact that the drink (Freddocino) shared similarities in texture, name, and packaging with Starbucks’ own Frappuccino, a registered trademark owned by Starbucks. While Coffee Culture Cafe attempted to negate damage by renaming the drink “Freddo”, it wasn’t enough to deter Starbucks from proceeding with the infringement. The verdict remains pending and we look forward to learning more as the case unfolds. A trademark lawyer or agent may be able to alert clients to the possibility of infringement with proposed trademarks to prevent these types of issues from arising.

Starbucks v Sambucks

Notorious for its willingness to enter trademark battles, Starbucks has a wide selection of cases to choose from. The world’s largest coffee chain once went after a restaurant in British Columbia because it was called HaidaBucks and took a Texan bar owner to court over a beer he brewed and sold named Star Bock. Sam Buck Lundberg, a coffee shop owner in the small town of Astoria in Oregon, didn’t have long to wait for her Starbucks order when she used her name to brand her shop “Sambucks”. Starbucks sent her a cease and desist letter and reportedly offered her $500 (£400) to rebrand, but when she didn’t comply the case went to court. In 2005, a judge ruled in favour of the coffee giant, ordering her to drop the name “Buck” from everything in her store, including the coffee cups and the front window. Lundberg’s verdict? After the ruling she told ABC News: “People think this is a crock of crap.”

Marvin Gaye v. Pharrell Williams and Robin Thicke

In March of 2015 , a jury found Williams and Thicke's 2013 hit song 'Blurred Lines' to be a copy of Mavin Gaye's 1977 hit 'Got to Give It Up'. The duo were asked to pay $7.3 million to Gaye's children, almost half of the 2013 hit's estimated profits of $16 million.

Academy Awards v. GoDaddy

The Academy Awards and domain retailer GoDaddy recently concluded a five-year legal battle over "cybersquatting" issues. Initially filed in 2010, the Academy alleged that GoDaddy's decision to allow customers to buy "confusingly" similar domain names such as 2011Oscars.com, allowed profit from individuals who wanted to "park" on these domains and collect revenue.

Initially, the Academy managed to demonstrate in court that 57 domains were sold by GoDaddy with the potential for confusion. Ultimately, the judge ruled that GoDaddy did not "possess the requisite bad faith intent to profit" from their sales.

While this legal battle was undoubtedly expensive, it may be considered a landmark ruling in the cybersquatting space. Similarly frustrating lawsuits can be avoided when, like in GoDaddy's case, you may not be able to reasonably expect a third-party to "police" your brand trademark.

Lucky 13 v. Taylor Swift

Taylor Swift recently settled a lawsuit brought by Blue Sphere, a clothing company that owns the "Lucky 13" trademark. The organization filed when Swift began selling fan merchandise marked "Lucky 13," and launched a "Lucky 13" sweepstakes among other activities.

While Swift insisted that 13 was just a lucky number to her and claimed "harassment" by the plaintiff, the results of the lawsuit were not released publicly. A confidential agreement was reached out of court, and Swift has begun proactively trademarking other phrases and lyrics she uses often to avoid future issues.

American Eagle v. Pantaloons

The parent company of clothing retailer American Eagle, Retail Royalty Company, has filed in the Delhi high court against Pantaloons Fashion & Retail. The lawsuit alleges that the " brand and logo are deceptively similar to its American Eagle Outfitters brand and logo."

While Retail Royalty Company is US-based, this case is far from the first example of international retail copyright infringement. Fashion United reports that Gap has also recently filed against India-based brands selling under the name "Gap Two" Even for organizations that are not international, it can be critical to monitor your trademarks on an international scale.

Segway v. Swagway and Razor

Love them or hate them, there's no question that the two-wheeled standing scooter has been associated with Segway since 2001. There's currently a mass of litigation around Segway and competitors. Segway is suing Kickstarter-backed Hovertrax, which is now owned by Razor, as well as Swagway. Razor has also filed against Swagway.

VentureBeat notes that the motivation for these lawsuits could be based on more than just the noticeable similarity of the products under mention. Swagway is currently facing extensive safety and accident lawsuits for incidents that involve falls and fires. While it remains to be seen how the patent infringement allegations will be evaluated in court, there's no question that these cases are more complex than simple trademark infringement. They're also motivated by concepts of brand protection, and a desire to distance products from Swagway's reported safety risk

Apple Corps v. Apple Inc.

Who has the right to trademark the word “apple,” the Beatles or Apple Inc.? The Beatles came first, with their music company Apple Corps, and then eight years later Steve Jobs introduced 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.

Washington Redskins

Is your trademark politically correct? It better be.  The Washington Redskins recently lost their trademark protection for the team name because the USPTO ruled the name was disparaging of Native Americans. They don’t have to change the name of the team, but they have lost the ability to prevent counterfeit Redskins merchandise from entering the country and being sold. The team is currently appealing the ruling.

Wrigley's Doublemint

The Wrigley Company wanted to trademark the name “Doublemint,” which, on the face of it, seems reasonable enough. But in Europe, at least, they can’t do it. The ruling against Wrigley stated that the word “Doublemint” lacks an imaginative element. Whereas, Proctor & Gamble were able to trademark their product name Baby-Dry with no difficulty in Europe.

Jack Daniels and Patrick Wensick

The noted distiller discovered that a book cover by popular author Patrick Wensink looked an awful lot 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; and if he did, Jack Daniels would happily contribute financially towards the change.

Wensick publicized this letter on his own website and it went viral, garnering Jack Daniels a ton of positive publicity.

Microsoft v. MikeRoweSoft

At 17 years old, Michael Rowe started his own website design company. Looking for a catchy name for the business, he decided to create a parody of computer software giant Microsoft using a variation of his own name. Rowe purchased the URL mikerowesoft.com.

The Bill Gates empire caught wind of the site and threatened to sue for trademark infringement. To avoid litigation, they graciously offered Rowe $10 to reimburse the expenses incurred in buying the web address. When the story started hitting online news sources, the outcry from average web surfers was intense. A defense fund was set up in Rowe's name and people donated around $6,000 to help him fight the power.

After the online commotion died down, Rowe began to realize just how much was at stake if he saw this case through. His measly $6,000 was nothing compared to the billions Microsoft had at its disposal. And should he lose, Rowe would be responsible for the court costs of a team of Microsoft lawyers, a fee he'd be struggling to pay for the rest of his life. He began to wonder if he should just take his $10 and throw in the towel.

However, the bad press Microsoft received was enough to make them sweeten the deal. In the end, Rowe handed over the website in exchange for Microsoft Certification training, a trip for his family to a tech conference in Redmond, Washington, assistance to set up a new website, and an Xbox videogame system.

Burger King v Burger King

Back in the early 1950s, Gene and Betty Hoots bought the Frigid Queen ice cream stand in Mattoon, Illinois. A few years later, they expanded to a new building, where they sold burgers and fries. When looking for a name for this new venture, it was suggested that a queen needs a king, so they called the business "Burger King."? They registered the name with the State of Illinois in 1959, giving them exclusive rights to the moniker in the Land of Lincoln.

However, there was another Burger King you might have heard of that was busy building three dozen burger joints all across the South. Thanks to this success, they expanded into the Midwest and, in 1961, opened a restaurant in Skokie, Illinois, followed shortly by another in Champaign, Illinois, just an hour north of Mattoon. By 1967, Burger King Corporation had opened 50 locations across the state.

After years of legal back-and-forth between the companies, Gene and Betty Hoots finally sued the Burger King Corporation in an effort to stop them from using the name Burger King in Illinois. However, because the Home of the Whopper was by then a nationwide chain, the corporate giant was allowed to keep the name.

But that didn't mean the Hootses had to change the signs on their building. The courts ruled that they owned the exclusive rights to the name Burger King within their business region, legally defined as a 20-mile radius around town. To this day, if the other Burger King wants to open a location there, they have to pay the Hootses to use the name.

WWF v WWF

When wrestling company Titan Sports changed its name to the World Wrestling Federation it was drawn into a legal fight with another WWF, the World Wildlife Fund, that lasted 13 years. The conservation charity took action to protect its brand from what it described as an “unsavoury” connection with wrestling, and, in 2001 a court in London ruled in its favour. Not one to take a beating lying down, the World Wrestling Federation challenged the ruling, and, after that was dismissed, it threatened to appeal. The wrestlers eventually gave in and spent millions rebranding to World Wrestling Entertainment, WWE. It also used the line “Get The ‘F’ Out” as a marketing slogan. After the World Wildlife Fund’s victory, a spokesman for the charity said: “It’s been the wrestlers against a cute little panda bear. And the panda won.”

Australian Trademarks

Trademarks are a form of Intellectual Property that allows your to distinguish the goods or services of your business from those of other businesses. It gives you exclusive rights to commercially use, license or sell the trade mark. This means that no one else in Australia can commercially use your trade mark within the class of goods and services its registered under.
IP Australia is the government body that regulates all Intellectual Property in Australia.

Trademark Guidelines

Trademark Process

As IP agents, Company123 can guide clients through the application process, which involves the following steps:

 
Step 1: Conduct an analysis on the likelihood of success for your trademark

This is an optional step but is strongly advised to allow for clients to be well-informed before proceeding to application which can be costly.
This process can involves:

 Trade Mark Search Report, prepared by our trade mark specialists

    A Trade Mark Search Report will outline the likely outcome of your application, highlighting any potential difficulties, problems or potential conflicts.
    The search report will also provide advice in regards to appropriate classes, if the text, phrase or logo needs to be changed as all as well as some general trade mark information.
    The search report is a great starting point if you are unsure about Trade Marks, as this allows you to see how likely your mark will be registered without paying the full fee.
    Search reports are generally delivered with 5 business days and if you are happy with the outcome, you can proceed to the application.


with the option to add an:

 Expedited Analysis Report, coordinated by Company123 with IP Australia which allows for both speedy analysis results and a quicker application process afterwards as well. You can read about this system on the IP Australia website.
For further clarification on how Expedition works feel free to call our specialists at 03 9832 0660.
 

Step 2: Lodging an application

Before submitting an application, there are some simple questions to answer first (when conducting an analysis prior to application, these questions are answered as part of the analysis).

First, what type of trademark are you applying for?

For example, a text or a logo? Each has to be a separate application.  These are the most common types, but there are various specialised and niche types of trademarks, which can be found on the IP Australia website.

Next, what class/classes your trademark should be registered for?

There are 45 different classes, encompassing a wide range of goods and services.

To help you decide what goods or services to list think about the exact nature of your business and ask yourself the following:

    Where do you derive your business income?
    What is the nature of your business?
    What are you known for by your customers/clients?
    What products or services does your business provide?

IP Australia provides a Trade Mark Assist service that can help further determine what classes are best for your trademark.

To lodge an application through Company123, this form has to be filled out.
Once payment is made, Company 123 as IP agents proceed to lodge the same day, and the Notice of Filing is given by IP Australia within 1 business day.

 
Step 3: Examination

Next, the proposed trademark is taken under examination, which ordinarily takes 4-6 months.
With Expedition, this can be cut down to 1-2 months. (important to note that although you will receive early acceptance, for official registration every trademark has to wait at least 7 months)
 

Step 4: Acceptance/Adverse Report

If successful, the trademark will be issued a Letter of Acceptance, and will proceed to Step 5.
If unsuccessful, IP Australia will issue an Adverse Report detailing the issue.
From there, there are often options to overcome the objection.
Sometimes this involves amending the application by limiting the scope, sometimes providing evidence of Prior Use.

Further information can be found here.

 
Step 5: Advertisement to the Public.

During this 2 month period, it is advertised for opposition purposes.
If there is no opposition (which is common), the application will proceed to Step 6.
 

Step 6: Registration

When a trademark is registered, you will receive a Certificate of Registration and the trademark is valid for 10 years, after which it must be renewed.

International Trademarks

 

Company 123 can also handle all your international trademark needs.
International Trademarks can be done concurrently as Domestic Trademarks using the Madrid Protocol system.
 

Claiming Priority

If applying for an international trademark within 6 months of lodging of a Domestic Trademark, the international trademark can claim priority and be backdated to the date of the original domestic lodgement.

All countries covered by the Madrid Protocol can be found here.

For more information on the international trademark process see here or call our trade mark specialists at 03 9832 0660.