A Legal Blog by Aaron | Sanders, PLLC

Crying in Your Beer: With Trademarks, Get Clearance Before Falling in Love

Applications to Register a Trademark Can Give Away Your Position

BLACK OPS is a great name for beer. It suggests (and doesn’t merely describe) the beer as dark, secret and elite. It’s as though only you and a select few know about this beer.

The thing about excellent trademarks is that great minds often think alike, and more than one person is likely to independently hit upon the same clever trademark. But, usually, there can only be one—the one used in commerce first. This is known as priority.

There Can Only Be One! (But Where?)

In the old days, it was not unusual for similar trademarks for similar goods to co-exist, provided they were far enough away from each other. But increasing mobility, the development of national markets and distribution systems, the internet and, most of all, federal trademark registration have changed that. Nowadays, it’s actually pretty uncommon for a product’s market to be geographically limited. You can sell nearly any moveable product nationwide, and even services are increasingly available to remote customers.

The way it used to work is like this: Say Xena started selling NOS HABEBIT hummus in Florida in 2000, and Yanni independently started selling NOS HABEBIT hummus in Oregon in…

Plaintiff's BROOKLYN BLACK OPS on the left (only $29.00 a bottle!), Defendant's BLOCK OPS BREWERY on the right.

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How Amazon Held off Apple in the Fight over APP STORE (Part 2)

And What You Can Learn About Trademark Law

In my last post, we set the stage for the trademark conflict between Apple and Amazon over APP STORE, and saw that Apple operated under a number disadvantages.  In particular, Apple lacked a U.S. trademark registration, and was asking the court do so something extraordinary.  We’ll see now that Apple did pretty well despite these problems, but in the end, Amazon was able to carry the day by attacking Apple’s arguments at their points of (seeming) greatest strength.  We’ll also see that a judge wasn’t willing to hold to a lazy, un-nuanced view of eCommerce, and that helped Amazon, too.

Amazon attacked Apple on two fronts.  First, Amazon contended that Apple couldn’t prove that it had a protectable mark in APP STORE.  In fact, Amazon APP STORE wasn’t a mark at all–it was just plain English words.  Second, Amazon contended that no one was likely to be confused between Amazon’s and Apple’s APP STORE, mostly because there wasn’t much to the mark and the applications Amazon wanted to sell wouldn’t work on Apple products.*

* You might ask why Amazon didn’t attack Apple very hard on irreparable harm.  That’s because, in trademark…

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