Otto von Bismarck’s famous quote - 'Only a fool learns from his own mistakes. The wise man learns from the mistakes of others', obviously rings true with our readers. The most popular blog post to date on TrademarkNow is "Nine Nasty Trademark Infringement Cases – and how to avoid them". Unfortunately, there is always a raft of fresh trademark infringement cases with lessons to deliver, so we decided it was time to update this classic piece so you can gain more insight into how to avoid a costly, stressful, and reputationally devastating infringement case against you.
Let’s kick off by examining the granddaddy of all trademark infringement cases, involving the most famous boy band in the world, and you guessed it, Steve Jobs.
1. Apple Corps v Apple Computer
You don’t get to be as legendary as Steve Jobs without a) being comfortable with risk, and b) being surrounded by smart advisors. So we can only speculate that when Mr. Jobs gave his brand a similar name to that of the holding company founded by The Beatles in the late 1960s, he simply felt the fear and did it anyway.
In 1978, Apple Corp sued Apple Computer for trademark infringement. The case settled in 1981, with Apple promising it would never enter the music business.
We know how that turned out. Hello iTunes circa 2003.
Five years later, everything was settled. Apple Inc, as it was by then known, took over all the trademarks related to “Apple” and would license certain trademarks back to Apple Corps.
Is there a lesson to be learned? It does pay to know where your brand is headed in the next 5-10 years. There may be little chance of a trademark infringement occurring in the present day, but if your goal is world domination (often the case with entrepreneurs), make sure your trademark search covers future products and ideas, even if they are only in the early stages of development.
As an aside, Mr Jobs was a massive Beatles fan, and the band’s back catalogue became available on iTunes in 2010.
Verdict – Settlement reached
2. Monster Energy v Thirsty Beasts
Time for a David and Goliath story, with a sting in its tail. In 2018, Dan Smith, from Newbury, launched a healthy drinks company called Thirsty Beasts. Shortly afterwards, Monster Energy, a US-based company, sued for trademark infringement, claiming customers would confuse Mr Smith's slogan - "Rehab the beast" - with its "Unleash the beast" line.
The UK Trademark Office ruled in favor of Thirsty Beasts, but Monster Energy appealed the decision. Mr Smith ultimately won the case against the billion-dollar company; however, it cost him £75,000 in savings.
If you are going to create a similar company name or slogan as a well-known brand, make sure your pockets are deep enough to fight filing objections.
Verdict in favor of Thirsty Beasts
3. Adidas AG v ELEAGUE/Turner
If you plan to trademark any sportswear with three stripes, you had better be prepared to take on Adidas in the courtroom. In 2017, Adidas challenged a trademark registration filing from Turner, owners of ELEAGUE, an official worldwide esports league, for its principal logo image. The image contained three stripes.
Although Adidas acknowledged that it does not operate in the e-sports sector, it argued it is a market they could naturally step into.
Verdict – Pending, but likely to be in favor of Adidas
4. WWF (now WWE) v WWF
The World Wildlife Fund’s (WWF) funding relies on its brand being seen as respectable, caring, sensible, and the lover and protector of all living things. So you can imagine its horror when the wrestling company, Titan Sports changed its name to the World Wrestling Federation, or WWF for short. The action led to a 13-year battle, with the World Wildlife Fund fighting to protect its name being connected to the sport of wrestling.
In 2001, a London High Court ruled in the wildlife organisation’s favor, with Mr Justice Robin Jacob ruling that the federation broke a 1994 agreement under which it promised to restrict its use of the initials in its business activities. The wrestling company threatened to appeal, but eventually backed down to the panda and spent millions rebranding to World Wrestling Entertainment, WWE. Given that it uses the line “Get The ‘F’ Out” as a marketing slogan, those responsible for fundraising at the WWF must be heartily relieved.
The WWE could have saved itself a lot of time and money if it had ensured it was fully distinguished from the almost 60-year-old brand in the first place.
Verdict – A rare victory for wildlife
5. Google LLC v Chris Gillespie
Has Google become a victim of "genericide"? According to the Courts, not yet. Genericide occurs when a trademark becomes so ubiquitous that the continuation of the mark makes it difficult for competition to flourish. Terms such as teleprompter, thermos, hoover, and aspirin, have all suffered from genericide and manufacturers of these products can no longer trademark these expressions.
Chris Gillespie has been arguing for years that the word “google” has become a verb i.e. to google something, rather than simply a name of a product. Years ago, Mr Gillespie registered 763 domain names with the term ‘Google’, and seemed to never quite get over the tech giant’s insistence that he relinquish them.
Following a ruling against Mr Gillespie by the 9th US Circuit Court of Appeals, in October 2017, the Supreme Court threw out the case, in which Mr Gillespie stated: “There is no single word other than google that conveys the action of searching the Internet using any search engine."
So, for the moment, Google is still a trademarked brand as it has not yet gained the status of an "exclusive descriptor", needed for genericide to occur.
Verdict – A slam-dunk for Google
6. Gucci v Forever 21
Stripes seem to cause no end of problems in trademark law. In 2017, infamous copy-cat retailer, Forever 21, filed in a California federal court against legendary fashion house Gucci. Forever 21 asked the Court to determine that its use of blue-red-blue and green-red-green stripes on clothing and accessories did not infringe the Italian brand’s marks. In addition, it sought a ruling to cancel more than a dozen of Gucci's enormously valuable trademark registrations. This action followed Gucci sending Forever 21 a cease and desist letter regarding the stripy garments.
The case settled in 2018. It shows that big players can have the tables turned on them by determined “upstarts” who have become successful enough to finance a lengthy legal challenge.
Verdict – case settled
7. Instagram v LitterGram
We all want to protect the planet, right? Therefore, an app that allows users to share and geotag pictures of litter they see on the streets and report it to their local council is a good thing? Well, not according to Facebook. Danny Lucas, who founded LitterGram came to the attention of Instagram’s owners and was threatened with legal action unless his app’s name was changed. Mr Lucas made a public plea to Facebook founder Mark Zuckerberg claiming the “unreasonable demands that we rebrand will kill our momentum”.
And guess what? It worked. Facebook dropped the case.
Mr Lucas said: "We applaud Facebook for taking this admirable approach and thank them very much for lifting a weight from our shoulders that will allow [us] to focus on the job in hand."
Verdict – A win win – Facebook was seen as the good guy and supporting the environment and LitterGram did not have to change its name.
8. Walmart v Variety Stores
In March 2019, a federal judge ordered Walmart to pay $95.5 million in damages to Variety Stores over the use of the trademark “Backyard.” Walmart was ruled to have infringed Variety’s trademarks “The Backyard,” “Backyard,” and “Backyard BBQ.” Variety had appealed a lower court’s decision to award $31.5 million.
The jury found that Walmart’s use of “Backyard” risked consumer confusion. This case illustrates that even the world’s largest company (by revenue) will be called to task for trademark infringements.
Verdict – in favor of Variety Stores.
9. Elvis Presley v BrewDog
In 2016, Authentic Brands Group (ABG), which manages Elvis Presley’s name and official events, entered a trademark dispute with Scottish brewer BrewDog, after the latter named its beer brand “Elvis Juice IPA”. In response, BrewDog’s founders, James Watt and Martin Dickie, changed their name by deed poll to Elvis, and tried to convince the Court they named the beer after themselves.
In 2017, the British Intellectual Property Office (IPO) ruled in favor of ABG. However, this decision was overturned in 2018 on appeal because “put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.”
Following their victory, the owners gave away a free beer to anyone who turned up to one of their bars dressed as Elvis.
Verdict – the King lives on.
How to Avoid a Costly Trademark Infringement Suit
TrademarkNow offers the world's most powerful trademark search software. With built-in intelligence, our platform enables lawyers, legal professionals and marketers to quickly and securely assess risks with high-quality search results.