The Importance of Trademarking a Name

In the early 2010s, Microsoft was betting big on cloud computing. Their new SkyDrive solution had become a cornerstone of their cloud-based offering. The name captured what the service offered: a virtual drive in the sky.

Across the pond, British Sky Broadcasting, known simply as “Sky” to millions of UK customers, had been expanding beyond satellite TV into broadband and digital services. Sky had registered numerous trademarks around the “Sky” prefix.

When Microsoft started heavily promoting SkyDrive in Europe, Sky filed a trademark infringement claim against Microsoft in the UK, arguing that consumers might confuse Microsoft’s cloud service with Sky’s own digital offerings.

In June 2013, the English High Court ruled that Microsoft had infringed on Sky’s trademark based on “likelihood of confusion” between the two brands. Microsoft was forced to change the name, rebranding SkyDrive as OneDrive. Microsoft had to update software interfaces, marketing materials, developer documentation, and legal agreements worldwide, costing millions. For Microsoft, it was an expensive lesson in trademark law.

Luxury jeweler Tiffany & Co. sued Costco in 2013 after discovering the retailer was selling diamond rings labeled as “Tiffany” rings. Costco said it was using “Tiffany” as a generic term for a specific style of ring, not as a brand identifier.

Four years later, a federal judge ruled that Costco had infringed on Tiffany’s trademark by using the name in a way likely to cause confusion. The court awarded Tiffany $21 million in damages citing willful trademark infringement.

However, in 2020, this judgment was overturned on appeal, finding that a jury should determine whether customers were actually confused or not. The case highlights the complexity of trademark protection. The parties ultimately reached a settlement in 2021, ending the eight-year legal battle.

When Steve Jobs unveiled “iPhone” in January 2007, Cisco Systems executives were watching with alarm. Cisco had actually owned the “iPhone” trademark since 2000 and was already selling phones under that name. Hours after Jobs’ presentation, Cisco filed a trademark infringement lawsuit, revealing they’d been in licensing talks with Apple for years before Apple’s announcement.

Apple summarily dismissed the lawsuit as “silly” and questioned the validity of Cisco’s trademark. Behind closed doors, Apple faced a difficult choice between rebranding their most important product launch in years or negotiating with a competitor.

Six weeks after the lawsuit was filed, they announced a settlement allowing both companies to use the “iPhone” name. While the exact terms remained confidential, analysts believed Apple paid substantially for the rights, deciding that the iPhone name was worth paying for rather than settling for an alternative.

In America, the Anheuser-Busch brewery had been making Budweiser since 1876. But in much of Europe, “Budweiser” means something entirely different: a premium Czech lager (known as “Budweis” in German) brewed since 1795.

When both breweries started expanding internationally in the early 20th century, Anheuser-Busch claimed they had established the Budweiser brand globally, while Budvar argued their beer had geographic authenticity—after all, they were the original beer from Budweis. This led to one of the longest-running trademark disputes in history, spanning over 100 years and more than 40 countries.

The conflict created a patchwork of legal arrangements across the globe. In some countries, like the UK, both beers exist side by side—Anheuser-Busch’s product is called “Bud” while the Czech beer is “Budweiser Budvar.” In others, one company has exclusive rights to the name. The Czech brewery sells its beer in the US under the name “Czechvar” because it can’t use “Budweiser” on American soil.

Despite multiple ownership changes—including Anheuser-Busch’s acquisition by InBev in 2008—the dispute continues today, with neither side willing to surrender what they see as their rightful heritage.