Do I Need a Trademark?
Read the title of this post; do you see the connection? The international intellectual property attorneys at Whitcomb Law, P.C. do.
Let Us Explain
Apple, Inc., the ubiquitous multinational computer and technology company, best known simply as "Apple," almost wasn't "Apple." Apple, Inc. was formed in 1976 and incorporated as "Apple Computer, Inc." in 1977. One year later, it found itself being sued by Apple Corps, Inc. for trademark infringement. For those unfamiliar, Apple Corps, Inc. is a multinational media company created in 1968 by The Beatles. Yes, THE Beatles.
The companies settled in 1981 for $80k. Apple Corps agreed not to enter into the computer business and Apple, Inc. agreed not to enter into the music business. Not a bad deal if it ended there. Instead the companies engaged in legal disputes on and off until 2007.
The most recent dispute arose in 2003 because Apple had begun selling music via iTunes. Apple Corps argued that this violated the contract between the two parties, in which Apple agreed not to enter the music business. Steve Jobs was never one to turn back from a dispute, and Apple countered that the company’s actions weren't covered by the agreement because they weren't producing music, merely offering a platform for its sale.
The case was brought in England and a lower court ruled in favor of Apple, although Apple Corps refused to accept the decision and promised to appeal. Eventually the parties reached a new settlement agreement, and many cheered when iTunes began selling The Beatles music. A quick U.S. Trademark Office Search shows that at least five trademarks have been assigned from Apple Corps to Apple Inc.
Lessons for Your Business
This may be an interesting story; but what does it mean for your company? It's a precautionary tale of the dangers of failing to do your homework. While Apple, Inc. has millions of dollars to spend on attorneys and settlements across different countries, not every business has this luxury.
To avoid ending up in a similar situation, we recommend that you understand trademark basics, do your research, and consult with an attorney. Trademark and intellectual property law are complex areas of law, especially when a company is doing business across multiple countries. There are many exception and nuances, and countries may offer varying levels of protection to their own citizens and to foreigners. Investing in an attorney now can save you a lot of money and headache in the long run.
Under U.S. Federal Law a protectable trademark is any word, name, symbol, device, or any combination thereof that is used by a person to “identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” (15 USC 1127).
Of course, trademark law is incredibly important then when trying to pick a business name that is available for use.
Business Name Research
As a business owner, the first step should be to conduct three searches to see if a company is already using your proposed name: a basic google search, a U.S. Patent and Trademark Office Search, and a search of the relevant office in any other countries in which you may do business.
You may still be able to use the name even if another entity is using the name and/or has registered it. This is because trademarks are often limited to a certain class of goods or geographic area. However, some trademarks, like McDonald’s, become so well recognized that virtually any use of the mark is considered infringement.
Contact an Attorney Today
Dealing with the complexities of trademark law can be difficult without the assistance of an experienced attorney. Whether you're just starting or have been in business for awhile, contact the attorneys at Whitcomb Law, P.C. today to discuss the intellectual property implication of your business name.