As of August 2013, the United States Patent and Trademark Office (USPTO) had more than 1.8 million active trademark registrations. That’s an impressive number, given that each of these marks is unique. But the increased number of marks also creates a problem.
With so many companies trying to protect their identities, the risk of trademark infringement becomes higher. Over the years, there have been thousands of trademark disputes—incidences where a business or an individual challenges the use of a mark by another party. The following are two of the biggest trademark disputes in recent history.
Twitter vs. Twittad
Launched in 2006, Twitter is one of the largest social media platforms in the world, with over 200 million active subscribers. In 2009, following Twitter’s rapid growth and success, the company tried to register the word “Tweet” as a trademark.
The problem was that several other online companies had submitted applications that incorporated the same word. One company in particular stood out: Twittad. Twittad owned the rights to the phrase, “Let Your Ad Meet Tweets.”
Because Twittad’s registered phrase and Twitter’s application both contained the word “Tweet,” the USPTO turned down Twitter’s mark on the grounds that it was “confusingly similar.”
In August of 2011, Twitter sued Twittad in a bid to cancel the company’s registered trademark. As part of its suit, Twitter argued that Twittad unfairly exploited “the widespread association that the public has with Twitter.” Twitter also went a step further, suspending the company’s Twitter account.
Countering Twitter’s claims, Twittad insisted that it had registered the mark long before “Tweet” became a popular social term connected with Twitter’s messaging platform. Twittad stated, “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark Office in 2008.”
However, in September of 2011, after a prolonged legal dispute, both parties entered into a settlement agreement. Twittad agreed to transfer the rights of its phrase “Let Your Ad Meet Tweets” to Twitter. This, in turn, allowed Twitter to continue with its application to register the term “Tweet.”
The exact terms behind the settlement were not disclosed, but a Twitter spokesperson released a statement saying, “We’ve arrived at a resolution with Twittad that recognizes consistent use of Tweet while supporting the continued success of Twitter ecosystem partners like Twittad.”
Apple Corps vs. Apple Computer
The trademark dispute between Apple Corps and Apple Computer was one of the longest and most protracted in history. Founded in 1968 by members of the Beatles, Apple Corps is a multimedia corporation, which owns, among other things, Apple Records. In 1978, shortly after Steve Jobs launched Apple Computer, Apple Corps sued Apple Computer for infringing on its trademark.
The two parties reached a settlement in 1981. As part of the agreement, Apple Computer agreed not to venture into the music business, while Apple Corps agreed to exercise similar restraint towards the computer business. Apple Computer also paid an undisclosed amount to Apple Corps as part of the settlement.
Things went smoothly thereafter for a few years. However, in 1986, Apple Computer introduced audio-recording capabilities to its line of Apple II computers. The company also added an advanced sound chip from a famous synthesizing company, Ensoniq, to its computers, essentially giving buyers the ability to make their own music.
This turn of events led Apple Corps to sue again, this time citing a violation of the agreement made in 1981. Because of the suit, Apple Computer was unable to continue with the development of the Apple II line. The company also halted its planned foray into advanced musical hardware.
Things reached a head in 1991 when Apple Computer introduced a system sound file called Sosumi to its Macintosh line. Although Sosumi was later revealed to be a play on the words “So sue me,” Apple argued at the time that it was a Japanese word.
After years of legal disputes, both parties finally reached another agreement where each specified the scope of their trademark rights. Apple Corps retained its right to use its Apple brand “on any creative works whose principal content is music,” while Apple Computer agreed that it would not develop, package, or sell physical music materials.
In 2003, following the launch of the iTunes Music Store, Apple Corps again sued Apple Computer, this time citing a breach in their most recent contract. Apple Corps held that by using the Apple brand for the iTunes Store, Apple Computer had gone against the agreement. However, the court ruled in favor of Apple Computer and asked Apple Corps to compensate Apple Computer for legal expenses.
The long dispute finally ended in 2007—at which point Apple Computer had changed its name to Apple Inc.—when Steve Jobs announced that both companies had reached an agreement wherein Apple Inc. would own all the trademarks related to “Apple” while licensing some of those rights to Apple Corps. Although the details of the settlement were not revealed, it is believed that Apple Inc. bought the trademark rights outright for about $500 million.
Commenting on the new agreement, a spokesperson for Apple Corps noted, “It is great to put this dispute behind us. The years ahead are going to be very exciting times for us. We wish Apple Inc. (Apple Computer) every success and look forward to many years of peaceful co-operation with them.”
The Bottom Line
Trademark disputes are expensive affairs, especially when they involve successful companies. That is why the USPTO advises that companies take the time to search for any similar marks before submitting an application.
Working with a qualified legal attorney like Xavier Morales can go a long way towards preventing trademark infringement. In addition to reviewing your application, an attorney can also help protect your rights, ensuring that you never have to worry about a protracted legal dispute like one of these two historic battles.