Trademark is my favorite component of intellectual property law. Both the conceptual framework and practical implementation have been successful. I am satisfied given the knowledge that when I walk into McDonald’s® I will get quality burgers at bargain price through the dollar-menu and when I go into Starbucks® I expect decent overpriced coffee supplemented by world-class service. Both companies have spent enormous amount of time and effort into developing the company image that they have today. Exclusive trademark protect both the businesses and the customers. Businesses can protect and enjoy the image that they have developed and customers can ensure that the products they are purchasing are ensured by a reliable trademark.

Apple is a perfect example of a company that has heavily invested in the image of its brand and all of its trademark products. For example, with the introduction of the Macintosh computer in 1984, the company spent about a million dollars to develop one of the most famous and influential Super Bowl advertisements in history to promote the Macintosh trademark:

It is clear that Apple’s marketing campaigns have created the company as it is today. The value of that bitten Macintosh apple logo is worth more than the market cap of many mid-size firms. I would argue that without such heavy investment into brand image, Apple cannot possibly sell its products at the prices they offer today.

Currently, Apple holds 185 trademarks covering anything from the Apple logo to iPod family, to Chicago font. The full list of trademarks can be found here: http://www.apple.com/legal/trademark/appletmlist.html

The most notable feature of the Apple product line are that Apple ‘i’ products. Adding the ‘i’ before product name is one of the most phenomenal marketing endeavors. Apple currently holds 23 trademarks that follow this feature. The ‘i’ product line serves two important roles. The ‘i’ automatically signifies that the product is guaranteed to be of good value under the Apple name. In addition, Apple tends to add a generic name after the ‘i’, such as iTunes, iPhone, and iPhoto. This method helps consumers to easily identify the product functionality. In comparison, the Zune and the Android do not have names that indicate the products’ function. (The Zune is Microsoft MP3 player and the Android is a Google phone platform).

Now, the problem arises when Apple wants to introduce a new product line under the ‘i’ series when the name has already been taken! In fact, that has happened to two of Apple’s most important products: the iPhone and the iPad.

Steve Jobs announced release of the iPhone in January of 2007, however, the iPhone trademark was already owned by Cisco. Cisco bought a company called Infogear Technology, which had developed a product that combined web access and telephone called the iPhone in 2000. Shortly after Apple’s iPhone was announced, Cisco filed a trademark infringement lawsuit against Apple. Cisco claimed that the trademark lawsuit was a “minor skirmish that was not about money, but about interoperability.” The two companies soon reached an agreement in February that allowed both companies to use the iPhone name in exchange for interoperability between their security, consumer, and business communication products.

A similar case of trademark overlap occurred to Apple’s recent announcement of the iPad. Despite the controversial name that resembles a product used by majority of the female population, the name was already registered by Fujitsu in 2003. Fujitsu’s iPad is a handheld scanner for retailers that has Wi-Fi, Bluetooth, and VoIP support. In this case, Fujitsu agreed to cede the trademark to Apple after an undisclosed agreement has been reached in March.

The cases of iPhone and iPad shade light upon an interesting topic of dispute in trademark law. Strict interpretation of trademark law would have prevented Apple from taking on the trademark names iPhone and iPad, which would have damaged the company’s branding effort for past decades. Some would argue that Cisco and Fujitsu were more or less lucky to have owned the trademarks and have benefited handsomely from it. On one hand, the names iPhone and iPad were not very valuable before Apple decided to use those names. Neither Cisco nor Fujitsu made visible attempts to glorify their trademark. Cisco’s lawsuit and bid for interoperability and Fujitsu’s disclosed settlement (which I assume meant some form of benefit offered to Fujitsu) were used as leverage to use an asset that they did not create. Yet, according to trademark law, as long as the products still exist and that the companies pay periodic fees, the trademarks should remain with the first registrar. And it sounds fair that trademarks should be given on a first-come-first-served basis instead of who-can-get-most-famous rubric.

My personal take on these two cases is that Cisco and Fujitsu have all the right to grab whatever Apple is willing to offer to sell their trademarks. They should be compensated for sharing or ceding the trademarks they legally own. And if Apple cannot offer what they expect, then they should have the right to retain their exclusive trademarks. Indeed, they are lucky that they are receiving benefits that they obtained through pure luck. But the rightful owner of a property should have the right to enjoy unexpected value increase. However, I can see convincing arguments from both sides. Legally, the opposing view has no potential to achieve substantial success. It would need to come down to a moral argument for the trademark holders.

Just to end on an interesting note, somewhat related to the topic of Apple trademarks: Perhaps Apple needs to be more aware of market potential of ‘i’ series.

The trademark is a powerful tool that although has drawn some ire, continues to be a legitimate way to hold the right to an image or theme through an extended period of time. Before we can even evaluate trademarks however, we must first realize what their original intention was for.

Trademarks have existed as a way to prevent confusion between brands. So that companies have control of what their own image is, trademarks work as a means of preventing others from infringing on their brand.  It makes logical sense that people will want to protect the products of their time and energy. The idea pretty much makes the same amount of sense as it did when the idea first came up… back in the 14th century.

Flash forward nearly 700 years. What do we make of trademarks today? Well, in the modern and digital age, now more than ever, trademarks play an important role in brand management. With the ever growing spread of information and pictures throughout the world, it becomes imperative that companies protect their own image when necessary. Now although not all of what these companies do may seem right, the protection of an image and its brand are a necessity for companies (existing and future ones) to have peace of mind in spreading the brand.

Those who disagree will point out the loss of one of Facebook’s most popular games of all time. The now defunct Scrabulous.

For many, Scrabulous was trademark rearing its ugly head. However, all will admit that scrabulous was a clear ripoff of Scrabble.

Was the style of the block the same? Yup. How about the board positioning? Definitely. The value of the letters? Of course. The color of the double up and triple value squares? All of the same.

Now, don’t get me wrong. When Scrabulous was around, it was an amazingly fun game to play while procrastinating homework. However, few if any will disagree that individuals, not of the Scrabble name (said: Hasbro) profited heavily from a product that was not theirs. With all of the blatant use of what Scrabble was, it was only a matter of time Scrabulous was shut down. Many argue that Scrabulous renewed interest in Scrabble, that it sold more product than had been sold in the many decades since it was first released. Just because a product increases the popularity, doesn’t mean that the unauthorized use of the brand is any better. Although Scrabulous looked, felt, and seemed the same as Scrabble, it wasn’t Scrabble. Hasbro had a problem with that and with good reason. Left to its own vices, Scrabulous could have changed Scrabble in ways Hasbro didn’t want to deal with. A brand is an image that gains value from what it represents. When the item for which it represents fragments, there arises problems.

Don’t believe me? Let’s check out the real world to see a similar phenomenon of trademark violations.

These are Nike Hyperdunks. A shoe head’s dream kicks (Translated: An enthusiastic shoe collector’s valuable pair of shoes). These retail for about $100 USD, but further on in its lifecycle, they will retail for a lot more than one Benjamin. As you can tell in the picture, they look awesome, fit very well, are extremely light for their design, and if Kobe Bryant is to be believed, allow you to jump over a speeding Aston Martin.

Oh, the best part of the shoes you just saw in that picture are that they are fake. 100% authentic made in china ripoffs. These are the real Hyperdunks:

Can you tell the difference? Not many, if any can. They look the same, feel the same, smell the same, and seem to function the same, but they’re not the same. The weighting is different, the support technology different, and apparently they “feel different” (my brother’s words, not mine). However, to the unsuspecting buyer who’ll probably buy this pair of shoes at a “great” deal for $40 dollars on eBay, they might as well be the same Nike hyperdunks they saw advertised. This shoe represents what Nike trademarked: it’s brand, it’s image, and its product. The nearly identical ripoff represents degradation to all three of those aspects. And so, the discounted shoes not only discount the quality of the merchandise, but then charge the discount to Nike’s reputation tab.

Now, I’m not saying that all copies are as blatantly terrible. Scrabulous functioned well and for all intents and purposes, was Scrabble. Hasbro, however, had every right to get rid of Scrabulous as it could have very well misrepresented its brand (as it did when it was buggy in the beginning). To draw from the loss of Scrabulous that trademarks are a cancer in this society is ridiculous. Trademarks are one of the few things that actually seem to work in the digital age. Why fix a relatively working thing when there are other terribly broken things to fix (*cough* copyright, DMCA, net neutrality, patents…)?

-Sebastian

There has always been an interesting dynamic with boundaries in how they serve not only a primary function in providing definition to a particular state, but inevitably by doing so they also define the state for the reverse, captured in the familiar adage, ‘boundaries are made to be broken.’  if there is ever a case where this cannot be less true, it is with trademarks.

Several years ago, when I was in Seattle, WA, there was a ice creamery on ‘the Ave’–a street in front of the University of Washington. It was a local store that mixed ice cream with ingredients of your choice on a cold, marble slab. None of us had ever heard of ‘Cold Stone Creamery’–which suspiciously sounded like they did the same thing as the then named ‘Marble Top.’ As far as we were concerned, Marble Top was the real deal. Then a few years back, it went through several name changes over the span of a few months: Marble Top, Cold Stone, and Mix on the Ave–unless it’s changed again. Was the store bought out by another franchise? Was it change of management?–everything seemed the same: the comfy, if somewhat worn couches were still in their corners, the flavors, the staff, what was going on? What we later found out was that our favorite ice creamery’s identity crisis was due to trademark issues. Whether or not the owners copied Cold Stone Creamery first, or developed the concept of their store independently, it was clear that there was only room for one marble-top-mixing ice creamery in town.

And this is how simple it used to be. As outlined in William Fisher’s Overview of Trademark Law, trademarks are pretty well defined and straightforward. On one hand, they are simple governing guidelines that define identity, and recognize the value of imagery, visual connection and identification. On the other hand, the Trademark Law also takes into account how these identities operate within the public sphere, so that, for instance, a generic mark that is extremely useful for identification cannot be controlled by a single manufacturer. What these laws have yet to fully address is what to do when identity, be it expressed as a trademark or a logo, is taken out of its traditional medium and thrust into a new context. In Steve Lohr’s A New Battle is Beginning in Branding for the Web (Link), Lohr eludes to new areas of conflict, namely how trademark owners will be faced with wrestling how their identity can exist on new technologies. He touches on, for instance, the purchase of trademarks as keywords for Internet searches. But equally important he describes an evolutionary departure from traditional forms of branding which has evolved to reflect our time. If you think of products and services that we grew up with, we could easily make out m&m’s, for instance, or a gas station.

Internationally recognized trademarks and logos.

Towards the end of Lohr’s article, he describes how technology has also had its own effect in the United States Patent Office. He observes that in prior times, trademarked images were grouped by visual categories, as “‘grotesque humans’ (the Pillsbury doughboy) and ‘human body parts’ (the Yellow Pages’ walking fingers).” His point underscores the shift that has taken place for companies to branch from the traditional practice of branding, which was to create an identity that indicates a singe entity. Branding now has evolved to include, sub-branding to reflect a suite or a family of products or services that fall under one umbrella, a prime example being Apple’s family of products.

Apple’s original logo

Apple’s growing family of products

The interesting aspect for me personally as a designer is to see not only how branding is effected by the changing medium and needs of our time, but it is also to see how trademarks take a life of their own and exist in a new context. In truth, it is only because we have had a foundation of trademark laws that make pieces such as the following short film, Logorama, take on the meaning that it does.

As the definition of branding continues to expand, trademark laws will inevitably need to be expounded and redefine how identification operate in the ever-evolving technological and competitive landscape.

The market created by domain registration treats domain names like fungible investments that derive value from certain events (such as celebrity dramas, or natural disasters) or bet on future outcomes that may increase the demand for particular domain extensions (although ICANN has rejected the use of .xxx as an ‘online red district’ designation, the commercial value of registering domains with that particular TLD is obvious and akin to making investments based on pending regulatory decisions).

However, trademark plays a major role in domain registration when a ‘domainer’ becomes a cybersquatter who in bad faith intends to commercially benefit from a domain that derives its value from the value of the goodwill of someone else’s trademark. Bad faith includes acquiring the domain name primarily to sell or rent it to the rightful trademark holder or their competitors, or generally profiting from the likelihood of confusion with someone else’s trademark. Cybersquatters can monetize their doman registration by posting paid links or advertising related to the trademark to attract users seeking information related to that trademark. Whereas investing in domains with particular characteristics is not particularly  different from other forms of fungible investing, the market for domain names have led to various forms of ‘bad faith’ registration, such as typosquatting (also bluntly called URL hijacking), which relies on Internet users’s typos when inputting a website URL into a browser to direct users to their domain.

ICANN’s UDRP policy allows a trademark holder to dispute a domain name if it is confusingly similar to their trademark or service mark, has been registered and is being used in bad faith, and the squatter has no legitimate interests in the domain name (registering a domain with a trademark ). The Anticybersquatting Consumer Protection Act (ACPA) goes on to establish cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark. But the distinction between a trademark-infringing cybersquatter and shrewd domainer is not always clear (for example, compare a domainer who owns two character domain names that later become valuable to a trademark holder – such as BN.com for Barnes and Noble or AE.com for American Eagle Outfitters – to one who has registered http://wwwwikipedia.org.)

In People for the Ethical Treatment of Animals v. Doughney, the court found that the defendant, who registered peta.org to create a website called ‘People Eating Tasty Animals’, was creating a parody and had the first amendment right to do so. However, when Doughney made statements suggesting that PETA should “settle” with him and “make him an offer,” the court saw this as an attempt to profit from his domain name and ruled that he had violated the ACPA. The nuance between profiting from a recognized trademark and parody is among many gray-area issues surrounding cybersquatting, which the court has noted in this particular case.