So, if you have found a potential infringer do you have to sue or can you let it slide? The tough answer is that you have to stop them, and here’s why:

If you and your competitor are selling the same or similar goods or services, how will consumers know which is which? Even if your product isn’t exactly the same, consumers might think that you could have expanded your offerings into that area if its not too far off. If someone out there now sells products related to your own with the same name, you have to try to stop them if you want to keep your trademark distinctive.

If the other trademark is a little different, but still sounds the same, means the same, or looks the same as your own trademark and its used on the same product you have to stop them as well. Consider differently spelled trademarks that sound the same. If a customer is telling a friend about your great product, will they be able to hear the difference between “BISCOH Brand Product” and “BIZCO Brand Product,” or “BOSCO Brand Product?” Probably not. The longer those sound a like products are on the market, the less consumers can be expected to consider one the original and the other the knockoff.

Courts have also developed a doctrine called “laches.” That is basically a doctrine considering the fairness of bringing a lawsuit years after you knew or should have known about a legal problem. If you allow your competitor to continue building their market, investing time and money in their own infringing trademark and could have stopped them before they invested all that money, courts aren’t as willing to enforce those trademarks. There is no absolute cutoff point for laches to take effect, but as years go by, the chances you will be able to win your trademark lawsuit get slimmer and slimmer.

A registered trademark gives you a tool to keep competitors at bay, but it wont do it for you. Policing your trademark and occasionally bringing a lawsuit is the only way you can actually keep your trademark. No one is going to stop a competitor from infringing your marks if you don’t. The longer you wait, the less likely it is that you will be able to stop them.

What you can’t use as a trademark:
- Offensive or disparaging words.
- Names that are primarily a surname
- Names that sound like, look like or mean the same as another competing trademark.
- Words that merely describe a feature of the product.

In my experience, the last two are the source of the most frequent problems. A different spelling or adding one more word to a trademark that already exists is still too close. The USPTO wants to help you register your trademark, but they also want to make sure there isn’t confusion in the marketplace. Foreign translations of trademarks are also a problem “Pomme Ordinatuer” doesn’t look like or sound like “Apple Computer” but it means the same thing. Descriptive words are helpful for telling consumers what your product does, but can’t be registered trademarks.

So what works? I am not an ad wizard but I have noticed a few things that are both clever and capable of being registered.

- Words that are associated with good qualities, but don’t literally describe the product. (e.g. EVEREADY)
- Words or images that are symbols for values that are important to your company. (e.g. FIDELITY, APPLE)
- Puns. Especially if you have a fun product (e.g. GARDEN OF EATIN)
- Just make up a word that sounds good but doesn’t mean anything. (e.g. KODAK)

A large part of a brand’s success has to do with how consumers feel about the products and not so much to do with having chosen the perfect name. I have no idea what “kodak” means (apparently nothing), but I do recognize the name and associate it with quality photography equipment. In the long run, so long as you keep you customers happy, and they know how to identify you, any name might work.

The offending trademark was DOPi which is iPod spelled backwards, but otherwise doesn’t really sound like or look like Apple’s IPOD trademark. Interesting to note that Apple wasn’t the first or only user of the names “iPhone” or “iPad” either. As I type this on my MacBook, I wonder what was wrong with the iBook name?

HT to Martin Schwimmer at the Trademark Blog