Izik was all set to open a new men’s clothing store when his attorney called to warn him that the name he chose for the store might be problematic. “Izik, a major clothier located in the other end of the country has ownership of a trademark of an extremely identical name despite a change of two letters,” the attorney opined. Upset that he might not be able to use a name he and his family clearly favored, he proceeded to use the name anyways only to be sued less than two years after opening by the West Coast clothier. He never thought that an entity on the other coast of the US would even find out that he was using an identical name. He was wrong! After spending on legal fees and many sleepless nights, Izik relented and changed the name of his business.
I have come across many similar situations where the entrepreneurs were simply dismissive of the possible consequences of using a potentially problematic name. I recall one saying, “no one will ever find out. I am just a little guy.” In the end they spent many dollars to rectify a situation that could have certainly been avoided if they addressed the issue probably at the outset.
Names hold enormous power in business. Establishing ownership of and rights to a business name is an important step for businesses that want to ensure a name remains one-of-a-kind and potentially unchallenged. A name is one of the most important assets of a business and is usually front and center of a sale. Registering a trademark helps protect a name or brand from intellectual property theft or misuse as a business grows. Doing it right is not only essential but extremely important in the growth of a business.
Over the years there were well established trademarks that had to drop their name because it was part of the vernacular and became generic. They had selected names that were easily identifiable and memorable, but the names were so good that they could not hold on to them. Escalator was owned by Otis and the trademark was revoked in 1950. The thermos, yo-yo, laundromat, and even wine cooler were all once trademarked before becoming so linguistically generic — so commonly used to describe a thing in society — that the rights were revoked in a court of law.
Another example of how a trademark can be caught in the web of commonly used generic names is Kleenex, a brand name for a line of facial tissues but which is also interchangeably used as a genericized trademark for facial tissue. “Hand me a Kleenex” means hand me a tissue. The name Kleenex is currently a registered trademark of Kimberly-Clark and manufactured in 78 countries and sold in more than 196 countries.
Google is a name that is commonly used today. In fact, the court ruled in favor of Google allowing them to retain their trademark, even if the term “google” has become synonymous with internet searches. “I’ll google it to find out where George Washington was born, “ said a history teacher.
The value of a trademark and the name go hand in hand. Some of the big boys with huge value are Amazon ($416 billion), Apple ($352 billion), Microsoft ($327 billion), Google ($324 billion), and Visa ($187 billion). The Coca-Cola Corp owns the trademark of the name Coca-Cola, as well as the trademark on the bottle shape, and the graphic representation of their name. These are all things that help distinguish them from other cola brands and define their individual product.
Trademark infringement is an everyday occurrence in the business world. The law defines trademark infringement based on 3 criteria: the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion. Who better than kashrus agencies have suffered from this malaise. Unauthorized usage of kashrus symbols has become an everyday occurrence.
Congress and the courts have been busy tightening trademark laws and redrawing the lines of what constitutes trademark infringement. In 2020 Congress passed the Trademark Modernization Act (TMA) and other legal guidance to tackle fraud, remove “deadwood” from the federal trademark register and streamline prosecution and enforcement strategies. The challenges in court cases have been steadily mounting. When Brooklyn Brewery Corp. attempted to prevent a competitor from registering a rival trademark in relation to hand sanitizer, it was denied by the US Court of Appeals for the Federal Circuit.
In January 2021, the US Supreme Court denied Jack Daniel’s petition to review the Court of Appeals for the Ninth Circuit’s decision allowing for humorous messages on products to qualify for the same First Amendment protections provided to expressive works. Jack Daniel’s sued VIP Products for making a dog toy that resembled a Jack Daniel’s bottle with the name “Bad Spaniels” on it, along with several other humorous quips
Counterfeit products present real dangers for consumers, particularly goods that may impact consumer health and safety. 3M, which makes disposable respirator marks, undertook a massive campaign to combat counterfeit products, setting up a fraud hotline and instituting dozens of lawsuits. The PTO, hoping to educate the public about the dangers of counterfeit goods, teamed up with the National Crime Prevention Council and McGruff the Crime Dog for a nationwide PSA campaign, warning consumers that “counterfeits  are cheating consumers and causing serious injuries and death, hurting U.S. businesses, and funding organized crime.”
Congress is also considering legislation that would address the issue of increased fraud including the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-commerce Act (SHOP SAFE Act) and the Integrity, Notification and Fairness in Online Retail Marketplaces for Consumers Act (INFORM Consumers Act).
It is well worth the expense of doing the trademark right. Often people assume that they are merely tweaking a name or logo and that they will not be caught but the evidence is clear that someone will be watching even if it is a small business vs.a Goliath.
From my marketing perspective it is extremely important to choose a name that is easy to recall, helps identify the product, and certainly distinguishes it from other similar brands. In recent years there has been increasing abuse of trademarks and some have taken license to plagiarize names and even logos. With that in mind, it becomes increasingly important to make sure that names, logos, and brands have ironclad protection.