The Importance of Trademarking a Name

Intellectual Property Protection

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The High Stakes of Trademark Protection

A strategic approach to naming requires understanding both protection and risk. While using a name establishes some common law rights, these rights won’t shield you if another entity has previously used that name for the same products or services.

Smart organizations conduct comprehensive trademark research before finalizing their name selection, identifying potential conflicts before they become costly legal battles. Even well-established brands can face unexpected trademark challenges:

  • Sky vs Microsoft SkyDrive

    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.

  • Tiffany Rings

    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.

  • iPhone

    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.

  • Budweiser

    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.

Don’t Gamble with Your Name

When do you need an IP attorney?

When it comes to your company or product name, betting without checking the odds is a risky gamble. If you receive a cease and desist letter, calling an IP attorney is no longer optional, it’s necessary damage control. However, the savvy player knows that the best strategy is to engage an IP attorney BEFORE placing your bet on a name. An IP attorney can research trademark availability in all relevant jurisdictions, significantly improving your odds of success.

Rather than crossing your fingers and hoping for the best, let the attorney file the proper applications to secure your name.

Stack the Odds in Your Favor

Take chance out of the equation

We can help you improve the probability of finding a trademarkable name through strategic prescreening. Instead of betting everything on a single name after weeks of brainstorming, we identify and eliminate high-risk options before you lock and load and assess the risk on the remaining options.

By integrating trademark considerations into the creative process, we can significantly improve your chances of success. This approach not only protects your brand from potential legal challenges but ensures you don’t go all-in on a name that you cannot register.

How to Trademark a Name

Step by Step Guide

To safeguard your name, a registered trademark gives you the legal rights to fully own and grow your brand.

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Glowing Reviews

  • NameStormers went above and beyond to help the business select a suitable name while taking into consideration the trademark risks.

  • They save you a lot of time by pre-vetting names with their own trademark issue elimination process.

  • They save you a lot of time by pre-vetting names with their own trademark issue elimination process and their expertise shined when it came to being creative with naming.

  • They were extremely helpful in testing the new names and gave solid recommendations on next steps from a trademark and legal perspective.

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