In 2014, major brands fought over words to trademark. In summary, Victoria Secret and Daniel Pink fought earlier this year over the flirty hue, ‘Pink.’ Kate Spade fought for their favorite day of the week, ‘Saturday,’ and Burt’s Bees battled it out for the word, ‘Bee.’ Gaming company, Candy Crush Saga, had a sweet tooth for the word ‘Candy’ and Google’s attempt to trademark the word ‘Glass’ had cracked. Read more about the war of the words below.
1. No Victoria, ‘pink’ is not your color.
A classy and sophisticated men’s dress shirt line, Thomas Pink, certainly didn’t want to get caught with their pants down and be mistaken for the Victoria Secret lingerie line, ‘Pink’, instead. To deter any confusion that could caused by the similar use of the word ‘Pink’ in both of their branding, Thomas Pink sued the lingerie line over the use of the word.
In the court ruling, Judge Colin Birss noted that…
“Consumers are likely to enter one of the claimant’s (Thomas Pink’s) shops looking for lingerie,” Birss wrote, “and be surprised and disappointed when they find they have made a mistake.”
So that no embarrassing confusion comes to the customer’s of Thomas Pink and so that no damages come to the Thomas Pink’s brand, Victoria Secret can no longer sell its ‘Pink’ line in Europe where Thomas Pink’s flagship store is established.
2. There was a lot of buzz over the word ‘bee.’
Late this year, Burt’s Bees sued Bobbie Bee skin-care company for trademark infringement because of the similar use of the word ‘Bee.’ In the 12-page lawsuit, Burt’s Bees claimed that consumers may assume that there is a connection between the two similarly named, unaffiliated companies especially since both companies sell natural products and cosmetics.
If Burt’s Bees wins the suit, Burt’s Bees will seek to seize all infringing products and promotional materials including a contact list of all of Bobbie Bee’s customers to whom allegedly infringing products were sold. Burt’s Bees is also asking for attorneys’ fees, money damages and litigation costs to top it off.
Ouch. This bee sting could hurt Bobbie Bee a lot.
3. But, Kate Spade we all love ‘Saturday.’
After a long days week who doesn’t love Saturday? No wonder a trademark dispute hashed out over the carefree and fun word. Earlier this year Saturday Surf, a men’s surf clothing company, claimed that Kate Spade’s brand, Saturday, was infringing on their mark by the similar use of the word ‘Saturday.’ Kate won the trademark case in spades.
The reason Kate Spade won was because the court ruled that because ‘Saturday’ is a prevalent word in the fashion industry and, for this reason, the court would not enable Saturday Surf to obtain exclusive possession of the word ‘Saturday.’ The word ‘Saturday’ identifies a carefree lifestyle and attitude a consumer experiences on the weekend, which can be applicable to a multitude of brands or products.
4. Candy Crush Saga had a sweet tooth for ‘Candy.’
Back in January, the year started off pretty sweet for Candy Crush Saga when there trademark was approved for the word ‘Candy’ after a whole year of waiting with a nagging sweet tooth. Apparently now, when a claim is filed with Apple, developers who are seen as infringing on the mark in the app store will be asked to remove their apps.
5. Google’s chances to trademark the word ‘Glass’ was foggy.
Google wanted to trademark the word Glass to brand their head-mounted smart devices. Because there was conflicting software/hardware companies who also held the word “glass” as a trademark, the trademark examiner held that because of the likelihood of confusion, Google could not trademark the term ‘Glass.‘
So all in all, make a wise decision about the words you chose! Often a free trademark search is sufficient to see if a word is available to trademark. Of course, always consult a lawyer to avoid any potentially pitfalls in trademarking a word.