Why Generalities in Name Selection Can Cause Legal Issues.
One of the ways businesses successfully compete is to brand their products and/or services. With a catchy and identifiable logo and/or name a business can distinguish itself from the masses. However, to successfully brand oneself, the branding should be unique and distinctive. A generic term is not considered protectable, and a brand loses its potency when it becomes too commonplace. If Apple had named itself “Computer Company” would it be nearly as successful? Granted its name is not the only reason Apple has reached the levels of success it has, but the name and the Apple logo are distinctive, remarkable and easily recognizable … and have nothing to do with computers. Furthermore, using a generic term, like Computer Company, confuses the marketplace and does not make your product stand out from the competitors.
An example of this issue appears in Microsoft Corporation v. Apple Inc., pending case number 91195582 in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board. Here, Apple sought to trademark the name “APP STORE” for its retail store services. Microsoft objected to this trademark application and filed a Motion for Summary Judgment on January 10, 2011. In its motion, Microsoft claimed that the phrase “app store” is "generic for retail store services featuring apps [applications]," and therefore not appropriate for registration. Apple in opposition to Microsoft's Motion claimed that the common use of its name “APP STORE” is because of the popularity of and connection to Apple's services and goodwill. In short, Apple argued that “app” refers to the sale of the applications as well as the Apple brand.
The Microsoft v. Apple matter is one that should be followed closely by businesses. The significance of this matter could be huge in the software industry as many companies are using the words “app store” in marketing their own products and services. Additionally, it may have far-reaching consequences effecting many other businesses and industries. Others have commented that Apple’s potential registration of the phrase “APP STORE” for the sale of its applications and related services would be equivalent to a grocery store naming itself Grocery Store and seeking to prevent its competitors from using the phrase "Grocery Store" in their advertisements.
No matter the outcome of this matter, the lesson in all of this is that to protect your company, your name, and your brand, you should have your items closely reviewed by the appropriate professional to determine whether they can be protected or registered before you become attached to them. The more colorful and unique the name, the better the chance of success; however, that, in and of itself, is not a guarantee for success. Before wasting money on registering a name or claiming unfair business tactics by competitors, one should have the proposed mark reviewed by a professional who can competently and thoroughly research the mark and make an educated and experienced opinion regarding its success.
©2011 by Innes Law Firm, P.L.
* Apple and Microsoft are the registered marks of their respective companies.
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