Among the “best ofs” for 2013 was Forbes’ list of The World’s Most Valuable Brands. Technology companies dominate, with Apple®, Microsoft®, IBM®, Google®, Intel®, and Samsung® holding 6 of the top 10 positions on the list. The others were Coca-Cola®, McDonald’s®, General Electric® and Louis Vuitton®. These are some examples of famous marks for brands that represent many years of high-value products and intensive marketing, advertising and promotion to attain such prominence.
Some marketers may be tempted to use a name devilishly close to a famous brand, such as “Mocha Cola” for a chocolaty drink or “Goggle” for a dual-window online search. But there’s a name for this kind of marketing cleverness—riding on a powerful brand—expecting that some of the luster of that famous brand could rub off.
Smart marketing pros tend to stay away from doing this type of twist on the familiar, knowing that a product recall and re-launch tends to interfere with a brand’s ultimate success.Famous brands are not just heavily promoted. Famous brands aggressively enforce their trademarks. They go after the too-close-for-comfort knockoffs, because failure to do so damages their brand, both in the eyes of the marketplace and, ultimately, in the courts. Legally, proving a mark is “famous” requires much more than showing a brand is well known. But once fame is established, a famous markis entitled to a broader scope of protection. For example, the mark THE OTHER WHITE MEAT, used by the National Pork Board, was enforced against the mark THE OTHER RED MEAT for salmon products.
One defense against infringing on a mark is parody—the idea that one might “borrow” a company’s mark to poke fun at it. This is the defense that prankster host of Comedy Central’s “Nathan for You,” Nathan Fielder, speaking about opening up “Dumb Starbucks” coffee shop in Los Angeles. But Starbucks® executives disagree.
One organization known for fiercely (some might say obsessively) defending its famous trademarks is the International Olympic Committee (IOC). Going for the gold and using any of the IOC’s registered marks without authorization is simply a bad idea. The IOC and its representatives, have launched successful challenges against the “Gay Olympic Games” by San Francisco Arts and Athletics, Inc.; and let’s not dwell on a butcher who was asked to remove sausages in the shape of the Olympic rings. More recently, an outdoor clothing maker who actually supplied uniforms to an official Olympic team, but was not a on official sponsor or licensee, has been challenged for using those same Olympic rings.
The legal test for infringement is whether the mark in question is sufficiently similar to a prior mark so as to result in a likelihood of confusion.
Confusion in this context means that the relevant consumer is likely to mistake the source of the products/services from another source using the same or a similar mark for the same or related products. In analyzing whether there is a likelihood of confusion, trademark examiners and courts take into account such factors as the visual, aural, or meaning-based similarities of the marks. Other considerations are the channels of trade, strength of the mark (whether it is fanciful, arbitrary, suggestive, or descriptive), fame of the mark, and the sophistication of the purchasers.With a mark recognized as famous, infringement may be easier to establish if there isdilution: unauthorized use that weakens the source-identifying capability of the famous mark. A famous mark can be enforced against a mark for even non-competing, unrelated products or services. Under a blurring theory, using a mark that is confusingly similar to a famous mark weakens the distinctiveness of that famous mark. Under a tarnishment theory, infringement occurs when an infringer sells inferior products or when the infringing use damages the commercial value of a mark, perhaps in the context of sex, drugs, crime, etc.
Examples of dilution are: THE OTHER WHITE MEAT for pork products/THE OTHER RED MEAT for salmon, BLACKBERRY for a PDA/CRACKBERRY for a variety of online service and headgear, ROLEX for watches/ROLL-X for X-ray tables, and MOTOWN for music/MOTOWN METAL for toys and games.
So when choosing a new brand, a good defensive strategy is to make certain your mark is not confusingly similar to a mark with prior rights and especially with a famous mark. Though infringement generally requires a finding of likelihood of confusion, the standard for enforcing a famous mark is different. Dilution may apply regardless of whether the mark owners are competitors or whether there is a likelihood of confusion.
That is, a proposed mark may not be available for adoption even though the products/services may be very different, even entirely unrelated. When you adopt someone else’s famous mark, you can open yourself to a challenge just when you’re trying to get traction for your new brand.