Expanding product offers can have unexpected trademark danger

The purpose of trademark law in the United States is to protect consumers from poor quality goods. Trademark users are granted the right to exclude other people from using a trademark so that consumers will not be tricked into buying goods which were not produced by the trademark user. A trademark law grants the user of a trademark a set of exclusive rights. The rights to a trademark are based on the products associated with a trademark. In the United States placing a trademark on a product automatically grants the trademark user some rights and registering the trademark with the United States Patent and Trademark Office will grant the trademark user additional rights. When someone uses another person’s trademark without permission that is known as trademark infringement.

The rights granted to a trademark user allow the trademark user to exclude other people from putting a confusingly similar trademark on similar products. But trademark law does not grant an absolute monopoly on a trademark. A trademark user is only allowed to exclude others from using a trademark on similar products. It is possible for two different companies to have the same trademark and not infringe on each others trademark rights.

A famous example of two companies using the same trademark but not infringing is Apple. The Beatles, the famous music group, owns a company called Apple Corp. Apple Corp holds the copyrights to all of the Beatles records and collects royalties when Beatles music is used. Apple Computer is a famous international computer manufacturer. When Apple Computer first started becoming famous in 1978, Apple Corp sued them for trademark infringement. The dispute was eventually settled in 1981, Apple Computer agreed to never enter the music business and Apple Corp agreed to never enter the computer business. This settlement lasted until Apple Computer opened the iTunes store in 2003. Apple Corp sued Apple Computer for trademark infringement and lost the case. The two parties eventually settled their dispute, Apple Computer won the right to use an Apple as a trademark related to music products but agreed to licence it back to Apple Corp.

This interaction demonstrations the dynamic nature of trademark law. Apple Corp was the original company to use an apple as a trademark in the music market. Apple Computer began selling computers and eventually moved into the music market. The original user of the trademark ended up loosing the trademark to a interloper.

A similar situation is happening now with the website This Week in Tech and Twitter. This Week in Tech is abbreviated TWiT and has sued Twitter for trademark infringement. TWiT produces original video content about trends in the technology industry. Twitter is popular a messaging application. In 2009, in much the same way that Apple Corp and Apple Computer agreed to not compete with one another, Twitter agreed to not produce video content which would infringe on TWiT’s trademark. Since then Twitter has expanded its product into the video distribution market. In January of 2018 TWiT sued Twitter for trademark infringement.

We must wait to see how the dispute between TWiT and Twitter will be resolved, but the important thing to learn is that trademarks must be jealously protected. If a trademark user does not actively enforce its rights, those rights can be extinguished by someone who enters the marketplace later.

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