Unique Trademark Designs Provide the Best Protection

Trademarks pack a powerful punch for millions of brands around the world. Oftentimes, trademarks are seemingly simple designs that evoke strong connotations. They can be a simple letter, such as an “M” representing one of the most famous trademarks in the world, the golden arches of McDonald’s. They can be a simple mark, such as the Nike swoosh. They can be a simple word, such as the made-up word “Google” or a generic word such as “Apple” that translates to one of the biggest technological brands around the globe. While these trademarks are seemingly simple, they spark recognition and association with particular brands that make them potent and valuable. This is why companies sue when trademark designs are too similar.

Some of the most famous brands have had to fight companies that emulated logos as parodies. For instance, The North Face sued the owner of The South Butt apparel because it felt that the parody devalued The North Face brand and could cause confusion. In this case, The South Butt owner designed a logo with similarities to The North Face logo. The North Face logo uses 3 ridges, while The South Butt logo featured upside down ridges. Both used red squares and white lettering. The parties settled and The South Butt dissolved. In another parody case, Starbucks was prepared to battle Dumb Starbucks, which used a nearly identical logo, with the word “Dumb” added to it. However, the shop was a very short-lived venture and was a stunt for a comedian’s project. However, the comedian did not obtain permission from Starbucks to use the logo and likely could have faced a lawsuit.

Adidas has sued several shoe companies for offering designs that too closely resemble the Adidas three-stripe trademark. For instance, Adidas has sued Skechers, Puma, and Ecco over its three stripes. In another footwear case, Converse sued 31 companies in 2014 for selling shoes with similar rubber and black stripes as its Chuck Taylor sneakers.

Countless other trademark infringement cases have occurred over trademarks that too closely match another company’s. One of the most popular companies, Apple, has taken issue with numerous companies for logos that look like an Apple. Some of these companies include Woolworths, GreeNYC, Victoria School of Business and Technology, Poison Apple, and others. In many of these cases, the opponent relented and changed its logo to avoid confrontation with the giant technology company.

However, it may be possible to have the same or similar trademarks within unrelated markets. For instance, the Infiniti moniker represents numerous products such as automobiles, HVAC systems, computer printers, hair supplies, and others. In such cases, the chance of consumer confusion is low or nonexistent. Consumers are not likely to confuse Nissan’s Infiniti trademark for automobiles with Conair’s Infiniti trademark for hair styling tools. It is also possible, but rare, to use the same trademark in the same market. Recently, two universities reached an agreement on the usage of the OSU trademark. Oklahoma State University and The Ohio State University can both use the OSU trademark under specific guidelines. Namely, the colleges can only use the colors of their respective college. Neither can disparage the other with phrases, and neither can use nicknames or mascots of the other in the use of the OSU trademark.

As you can see, trademarks are quite powerful and trademark owners will go to great lengths to protect them. However, it is also valid to have similar trademarks in unrelated markets. Yet, using a unique and new trademark creation may be easier and less likely to be challenged than using a trademark with similar traits to another, even if the markets are unrelated.

Five Reasons to Hire Pellegrino & Associates

Hiring a firm to conduct a particular service can be a daunting task. You want to choose a firm with a good reputation. One that can provide stellar service in a professional manner. One that has experience, skills, and the means to tackle the task at hand, as well as any unforeseen challenges that may arise. For IP valuations, choosing the right firm can seem especially cumbersome as it is still considered a niche market.

At Pellegrino & Associates, we offer a host of services to assist with IP valuations. The following list provides five reasons we are a trusted and reliable firm.

1. Experience. Our firm’s experience positions us among the top firms in a niche market. Our experience involves valuing intellectual property, determining royalty rates, and evaluating businesses, among others. We have performed nearly 400 engagements for more than 200 clients. Clients range from Fortune 100 companies to startups. We also have an international footprint, generating 33% of our business from companies outside of the United States.

2. Credibility. Pellegrino & Associates’ reputation and credibility is among the best in the profession. Judges, attorneys, and government entities have accepted our work product. Courts at the state and federal level, tax jurisdictions, and arbitration panels have accepted our work for issues including bankruptcy valuations, estate tax valuations, property tax valuations, income tax valuations, copyright infringement claims, trade secret misappropriation claims, patent infringement claims, breach of contract claims, and others. In addition, IAM Magazine identified our company president, Mike Pellegrino, as one of 2017’s leading IP strategists in its annual IAM 300 survey.

3. Thought Leader. Our firm’s experience positions us as a thought leader in intangible asset valuation. Our leader, Mike Pellegrino, authored the first and second editions of BVR’s Guide to Intellectual Property Valuation, which has more than 1,000 copies in circulation and reaches a variety of customers including attorneys, tech transfer officers, business valuation firms, competing IP valuation firms, and others. In addition, our finance- and software-related articles appear in internationally and nationally recognized outlets, such as IAM Magazine, Valuation Strategies Magazine, CFO Magazine, MSNBC.com, FoxNews.com, and others. Furthermore, we have had the pleasure of teaching thousands of people about valuations. Various venues around the globe, including law firms, universities, accounting firms, appraisal firms, valuation firms, state bar associations, and other organizations, frequently request our expertise at speaking engagements regarding intangible asset valuations and the tax effects of embedded application software and intellectual property.

4. Standards Setter. We also help set standards in the IP valuation industry. Our president is the chair of the patent valuation standards committee established by the Licensing Executives Society (LES), whose charter is to pursue American National Standards Institute-(ANSI) accepted standards for the valuation of patents in a variety of contexts including financial reporting, capital formation, economic damages calculations, and others. We are also a member of LES’s public policy committee, seeking to help set standards for intellectual property-focused regulatory matters with the SEC and others. We are also involved with the LES’s standards committee for IP use in the boardroom.

5. Pioneer. In addition to our valuation expertise, our president developed a state-of-the-art patent analytics tool that provides key insights and intelligence into the patent landscape. This system removes information asymmetry rampant in the patent marketplace by consolidating millions of disparate records into a user-friendly database.

As you can see, we are actively involved in the IP valuation industry. We set standards, offer loads of experience, develop state-of-the-art tools, and educate others within and outside the industry on the various aspects concerning IP valuations. Call us anytime or check us out to learn more via our website at www.pellegrinoandassociates.com. We are always happy to assist our clients