There seems to be no shortage of headlines lately dealing with trademark disputes between major brands and their “lesser” counterparts. This week has been no different, with Jeremy Lin of the New York Knicks, Apple, Inc. and COACH all jumping into the mix.
Linsanity
With Jeremy Lin’s meteoric rise to stardom, it was no surprise that two enterprising individuals applied to register “Linsanity” trademarks with the USPTO. Unfortunately for them, registering a trademark that incorporates someone’s name requires that person’s consent — and guess what, they didn’t have it. Now, Lin has filed his own trademark registration application to protect the term. Despite chatter on the web about the fact that Lin didn’t create the term (this isn’t the test for trademark ownership, by the way), it seems likely that his registration application will succeed. Although, at this point, he (or rather, his trademark lawyers) will have an uphill battle to combat unauthorized merchandise.
Apple vs. iPad
Apple continues to struggle to control use of the iPad trademark in China. Apple claims to have entered into a trademark assignment agreement to secure rights in the name several years ago, but that isn’t stopping anyone at the moment (the trademark infringement lawsuit filed against Apple isn’t stopping Apple, either). This will be an interesting case to follow, and should prove instructive for companies seeking to develop exclusivity with respect to a term that is already in use by someone else.
Apple vs. Wapple
On a different front, Apple recently lost in its trademark infringement lawsuit against Wapple, a mobile app developer. The U.K.’s Intellectual Property Office ruled that “Wapple” did not cause the confusion necessary to support a finding of trademark infringement. Particularly in light of the industry in which Wapple operates, this decision seems somewhat surprising (at least under U.S. law). Don’t be surprised if Apple continues to go after the owners of other similar trademarks in the future.
COACH vs. Coach
On the other hand, where two trademark owners operate in completely unrelated markets, a trademark infringement or trademark cancellation claim is much less likely to succeed. A recent enforcement effort by COACH (the famous handbag maker) serves as a good example. COACH opposed a trademark registration application for “Coach” filed by an educational test preparation company for use in connection with — well, test preparation services. After losing before the USPTO’s Trademark Trial and Appeal Board, COACH appealed in federal court. The federal court rejected much of COACH’s evidence, and sided with the trademark applicant in terms of seeing the word “coach” as not being purely synonymous with the luxury handbag brand.
As usual, the lessons from these cases are clear: Brand owners need to act early and often to protect their trademark rights.