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How does one even create the title of an app when basically most nouns in the English language have been trademarked?

  • When and when isn't a trademark valid?
  • For example, I was surprised that even the word corgi and jets are trademarked! Jacuzzi seems to be the strong advocate of their trademark. But, what if these words are used in combination? Such as: Front Jacuzzi Back Corgi?

Related to: Trademark Infringement notice for usage of a dictionary word Jacuzzi in app - Google Play Store

  • 7
    What does "Front Jacuzzi Back Corgi" even mean? The trademark system is designed to avoid customer confusion, and that phrase certainly confuses me! 😁 – David Richerby May 1 at 18:04
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    @DavidRicherby Just because I was curious I had to look it up and apparently it's a virtual resort app with an AI corgi butler of sorts. What a time to be alive! – DasBeasto May 2 at 12:52
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    @DavidRicherby Tell me about it. I've been trying to find where I can buy a Jacuzzi Back Corgi Front, and all the google results keep going to that app instead. – Acccumulation May 2 at 21:01
  • Well, it's a free app - virtual resort experience... If you really want to buy, that's great and would help incrementally support this indie dev... You can buy things in the app? – ina May 5 at 20:52
  • Note: this post was not meant to advertise my app, though if you are curious you can grab it on the app store at fbjc.me – ina May 5 at 21:20
32

You infringe a trademark when you use it in a way that allows confusion between your goods and services and their goods and services.

Trademarks are limited by geography (although global brands are ... global) and industry. You can use the word “apple” to sell, say, apples or plumbing services, but not computers or consumer electronics. You can also use the trademark Apple to identify goods and services made by Apple - because that’s what a trademark is for. You can’t use it in a way that people could be confused that your goods and services are their goods and services or are related to or endorsed by them.

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    Pertinent to the question, one also ought to be able to use the word "apple" in the name of an app that has to do with the fruit. – phoog May 1 at 18:11
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    Apple Computers is an interesting example to bring up, because they had a prominent dispute with Apple Records (owner of the rights to most of the Beatles' music among others), which didn't matter when they were in non-competing industries, but became an issue when Apple released iTunes and got into the music distribution business. For a long time, you could not legally find any of Apple Records' music (including the Beatles) on iTunes because of this. – Darrel Hoffman May 1 at 18:49
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    @DarrelHoffman I'm not sure that's really why the Beatles resisted downloadable content for so long..otherwise you would think if they really wanted to stick it to Apple then they would have signed an exclusive deal with Amazon or similar right away, instead of just waiting a really long time and ultimately signing an exclusive deal with Apple. – user3067860 May 1 at 20:46
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    @user3067860 Apple Records is not the Beatles - they are the record company who produced the Beatles records. – Dale M May 1 at 20:51
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    @DaleM It was founded by the Beatles, and run by them in the early years. Apple Records is to The Beatles as LucasFilms is to George Lucas. And for many years Apple Records held the distribution rights to Beatles music. – Barmar May 2 at 20:19
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Trademark infringement occurs when you use a trademark name in a way that confuses consumers about the source of some goods or services. If you use a word that happens to be a trademark in a context completely outside the context of the mark as an identifier for a business, there's no infringement. Just because "Apple" is a trademark for a brand of computers does not preclude you from talking about pieces of fruit called apples.

Trademarks are also domain-specific, so a landscaping service and a restaurant might have the same trademarked name with no issue: there's no possibility of confusing the two businesses, despite their identical name. However, trademarks found to be "famous" in some jurisdictions enjoy a cross-domain trademark monopoly: you cannot, for example, sell bicycles under the famous name "Coca-cola" despite your bike business having no relation to the soft drink industry.

Outside of "Jacuzzi" as a trademark, the word only has signifance as a person's name. (It is named after the company's founders.) Since your product has no association with any person named Jacuzzi, but does appear to be associated with hot tubs, the potential for confusion is abundant. Your use of the Jacuzzi name in association with a hot-tub-related app clearly associates itself with the Jacuzzi Brands company without authorization.

It is possible for a trademark to succumb to "genericide" whereby the legal status of a trademark is lost due to widespread use of the mark to signify a generic category of products, rather than a specific producer of a product. For example, "aspirin" and "escalator" used to be trademark names, but now are no longer protected as trademarks. It is exactly out of fear of genericide that companies like Jacuzzi aggressively litigate generic misuse of their brand names.

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    "Jacuzzi" is no more "fanciful" than "Ford" is. Giocondo Jacuzzi and his brothers started the company just like Henry Ford started his. Referring to one of their tubs as a "Jacuzzi" is identical to referring to a car or truck made by the Ford Motor Company as a "Ford". – Monty Harder May 1 at 16:28
  • @Monty My mistake! Discussion of fanciful trademarks is indeed not applicable here; personal-name trademarks are merely descriptive trademarks. I've removed that paragraph. – apsillers May 1 at 17:10
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    "Aspirin" is no longer a trademark in the USA but it is still a trademark in many other countries, according to Wikipedia. Not that this dilutes your point. – David Richerby May 1 at 18:02
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    @DavidRicherby it is also no longer a trademark in the UK, apparently cancelled in connection with the first world war. I've found the ruling that invalidated the UK patent, but the best evidence I have for the trademark cancellation is mention in Bayer v. American Druggists, a Canadian case from 1924. In the US, the trademark was found to have been genericized in the 1921 ruling (without, however using the word "generic") in Bayer v United Drug. – phoog May 1 at 19:20
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    Bayer AG lost its US trademarks on aspirin and heroin in 1919, right after WWI ended. All of its US assets were seized during the war, so Bayer had nothing to defend (and probably lacked standing to do so) in whatever genericization hearing(s) were held. That makes them far from a typical situation. Aaand I see phoog beat me to it. – Monty Harder May 1 at 19:20
5

I’d offer another example regarding confusion. McDonald’s is a well-known fast food restaurant. There have been cases of family restaurants that had this name being forced to change it, as the business was similar, i.e. selling food.

I doubt the restaurant would have any claim against McDonald’s Custom Crafted Furniture.

And on a side note, Pandora the music service lives a happy coexistence with Pandora the jewelry store. I was about to extend the joke regarding custom furniture, when a quick search led me to a “Pandora Reclining Sofa.” Proving the point that there seems to be no confusion leading to court between these companies.

Lest I leave before addressing the Apple in the room - Apple Records was the Beatles’ record label, and fought hard against Steve Jobs naming Apple. The defense brought to the courts was that a computer company wasn’t going into the music business. The rest is history.

  • As I recall, there was a court case in Scotland a few years ago where a Mr and Mrs McDonald, proprietors of a small eponymous cafe, were sued by the fast food chain. Even vaguer memory says that the couple won, partly because they'd been using their own name for their cafe for longer than the chain had been in Scotland. I think I read about this on the BBC but don't have time to find it at the moment. – David Richerby May 2 at 13:00
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    It's probably fortunate that your search for "Pandora reclining" didn't also land you Pandora Blake, especially if the search was on a work PC... – Graham May 3 at 1:06
  • Perhaps also worth noting that MCDONALDS was the registered US trademark for a plumbing and refrigeration company long before someone else named their restaurant the same thing and got the identical brand registered for goods and services in an "unrelated field". – Upnorth Sep 4 at 23:51

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