trademark disputesEvery year companies across the country enter costly legal battles over trademark disputes. The following post highlights four of the biggest trademark disputes in recent history.

Motorola v. Xoom Corp

Motorola, now a subsidiary of Google, is a smartphone and tablet manufacturer. The products all run on Google’s Android operating system, and have slowly become a major player in the tech market. One area where Google/Motorola is trying to win an even greater market share is with tablets. Enter the Xoom Tablet. It was introduced in 2011 as an iPad competitor, and garnered great reviews upon launching.

Xoom Corp., a digital money transfer company, was understandably irked at the naming choice for the tablet. Founded in 2001, the company filed for and received their service mark in 2004. It would seem that Xoom Corp had a pretty good head start on the trademark.

While Motorola does have a registered mark for the name in the computer/tablet category, the company’s lawyers agreed that it could cause consumer confusion, and that they may not win the court case. In August of this year, the two companies settled. The full terms were of course undisclosed, but ultimately Motorola has to phase out the Xoom branding for their tablets. This was an expected move, as the trademarks were practically identical. It’s surprising that Motorola’s branding team went forward with this naming convention to begin with, especially because Xoom – although not in the computer industry – is a tech company. Had Motorola done their due diligence, they would likely not have been in this position. Because of that, millions of dollars are lost on a brand that will now cease to exist.

Microsoft v. British Sky Broadcasting

SkyDrive was a product launched by Microsoft in 1997. It serves as a file-sharing cloud service, similar to Dropbox or Google Drive. In its early days, it served mostly for tech-type people. Its current iteration, however, is hugely popular especially overseas, and reached 250 million users last spring.

British Sky Broadcasting Group is a UK-based satellite broadcasting and telephone service company. It is the largest paid TV broadcaster in the UK and Ireland, with over 10 million subscribers. The company is widely known as “BSkyB” and their logo is simply a stylized version of the word “sky.”

This is a complicated case because it involves international courts for a US-based company, Microsoft. BSkyB brought the claim against Microsoft for use of its “sky” mark. The dispute was brought to court in the UK, which ruled that SkyDrive did (or would) in fact cause consumer confusion, and decided in favor of BSkyB.

This presented a tricky situation for Microsoft, as the ruling only applied to their product in the UK. To avoid even further confusion, however, Microsoft decided to rebrand the product worldwide. This will cost millions in design, app updates, focus groups to come up with a new name, and other costs that are typically associated with re-branding a product.

Jack Daniels v. Patrick Wensink

This much-publicized dispute led to a much better (and funnier) outcome than most trademark cases ever do. Author Patrick Wensink was in the midst of launching his book, Broken Piano for President. The cover of the book bears a remarkable resemblance to the Jack Daniels whiskey label that you find on bottles of the popular Tennessee whiskey.

While it’s all-too-common for large, corporate entities to scare the little guys out of using their trademarks, Jack Daniels went a different route and sent the following letter to Wensink:

“It has recently come to our attention that the cover of your book Broken Piano for President, bears a design that closely mimics the style and distinctive elements of the JACK DANIEL’S trademarks…We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel’s, we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly…If we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I’m sure that is not something you intended or would want to see happen…As an author, you can certainly understand our position and the need to contact you…In order to resolve this matter, because you are both a Louisville “neighbor” and a fan of the brand, we simply request that you change the cover design when the book is re-printed. If you would be willing to change the design sooner than that (including on the digital version), we would be willing to contribute a reasonable amount towards the costs of doing so. By taking this step, you will help us to ensure that the Jack Daniel’s brand will mean as much to future generations as it does today. We wish you continued success with your writing and we look forward to hearing from you at your earliest convenience.”

It’s rare for a cease-and-desist letter to carry such a nice tone. Understandably, Wensink obliged and changed the cover of his book.

Apple v. The World

This isn’t just a single case, but Apple is well known for bringing disputes to just about any company that tries to use an apple in any logo or design. The company has actually come under the ire of consumers for its rigorous defense of that famous apple mark:

  • In 2008, an initiative called “GreeNYC” used a green apple logo, which Apple tried to block. The case was dismissed and the logo was allowed to be used.
  • Again in 2008, Apple sent a cease-and-desist letter to a college in British Colombia that used an apple outline for their logo. Three years later, the college changed not just the logo, but their name as well.
  • In 2009, Apple tried to block Australian company Woolworths from changing to a new green logo that used a stylized apple. Woolworths removed a portion of their trademark, and continues to use the logo.

There are even more similar cases with Apple, these are just the most publicized. To have full ownership of the image of an apple is simply unrealistic for Apple the company. In the past couple of years, it seems they’ve slowed their litigation on this matter, so perhaps they’ve come to that realization as well.

Are you thinking about starting a new business? You can avoid any potential future trademark dispute legal battles by simply registering your trademark with the United States Patent and Trademark Office (USPTO). The Law Office of Xavier Morales can prepare and file a trademark application for your business name, brand or logo. Registering a trademark with the USPTO gives the owner of the trademark registration exclusive nationwide rights to use the name, brand, or logo.