legal, intellectual-property, international, trademarkSo, whenever I had to come up with a product name I always went for something perfectly unique, just to prevent later trouble. Discussing the recent Gnome Foundation vs Groupon news I realized that I did not truly understand when a trademark can and can not be defended (e.g. in this case: are they the same ‘market’ or not). Now, rather than asking some vague question I tried finding a list of (influential?) trademark defences and their outcome. To be clear here, I am not looking for an exhaustive list, but any kind of overview (~5 successful, ~5 unsuccessful ones) would probably give a better natural feel for this than a long legal explanation will.
Examples aren’t always the best way to understand something in law, unfortunately. Specific cases are interpreted based on specific scenarios, so just because something works in one scenario doesn’t mean it will under other circumstances. Theoretically, yes, our legal system is fair and consistent, but practicality falls a little short, especially in matters of intellectual property.
Fortunately, here, the standard for trademarks is pretty straightforward. I’ll even put it in italics, because it’s just that simple.
The purpose of a trademark is to protect the consumer from confusion.
Now, sure, “straightforward” and “just that simple” might be a bit of a stretch because, again, this goes to real people with real subjectivity who are asked to make a decision weighing facts, and two people might not make the same decision on the same case. But that’s what it boils down to.
I don’t mean to suggest, of course, that it’s a mess of opinions and no case will ever set precedent of any sort, that’s not true. It is law, and it’s as objective as it can be (arguably), so I’m sure someone with a little more experience–or perhaps, just raw time–could come up with a few examples to really answer your question, and I imagine they’d be meaningful in some respect, but that’s the phrase to really remember.
In this particular instance of GNOME and Groupon, it looks like the argument is being made that this merchant tablet interface could be confused with GNOME’s operating system(s). It’s then up to the court, or in this case more likely the USPTO, to determine whether that’s actually a valid concern.
Side note: the USPTO worries about whether something might be confusing, and the courts worry about whether something was confusion. Less subtly stated, it must be proved that confusion actually occurred. That can be tough to do, but it’s certainly feasible.
I suppose a hypothetical example might not hurt. Imagine a hypothetical moving company called White Glove Moving, and a similarly named carwash, White Glove Auto Detailing. Although these two names are extremely similar, and in fact lend themselves to the same concept, it’s likely that courts and the USPTO would be okay with them coexisting, because it’s unlikely that someone would be confused between a moving service and a car detailing one, because most businesses wouldn’t venture into both of those lines of work.
On the other hand, if a five-star restaurant opened up with two “golden arches” above the door, that would be likely to cause some confusion. Imagine going to McDonald’s and asking for a steak, only to be given a McRib, that would be pretty upsetting. Similarly, imagine going to a five-star restaurant and ordering a McDouble, then get a $60 check, also upsetting. Because in this case, they’d be similar enough to risk legitimate confusion, that would likely be considered an infringement.
In less of a hyperbole, imagine if you bought an NFL-branded jersey that fell apart when you washed it, because it was actually made by someone who didn’t really know what they were doing. That might make you upset (depending on your view of American football, anyway). A trademark is meant to help the consumer know what to expect.
Long story short, the goal of the trademark office is to protect consumers from being misled into thinking a product or service is from a different source than it actually is. I wish I could give you your “five successful and five unsuccessful” cases as examples, but I hope this lends some light into what you’re trying to understand.
Jury instructions are an often-overlooked but excellent resource. They’re written in plain language because the audience is regular people, not lawyers or judges. And they distill a lot of law into just a few sentences.
Here are the trademark jury instructions from the Ninth Circuit Court of Appeals. You’ll notice there are several instructions on defenses (15.20-15.23), but also take a look at the one on the definition of a trademark (15.1).
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