Lawyer Monthly - July 2024

In a well-known trademark dispute, Apple Inc., recognized for its iPhones and Mac computers, found itself in a legal battle with Apple Corps, a music company representing The Beatles. The conflict originated in 1978 when Apple Corps took legal action against Apple Inc. (then Apple Computer) for trademark infringement. This led to a resolution in 1981, where Apple Computer agreed not to engage in the music sector. Nevertheless, when Apple Inc. expanded into the music market with iTunes in 2003, Apple Corps initiated another lawsuit against them. The courts eventually sided with Apple Inc. in 2006, determining that there was no potential confusion between the two trademarks. In 2001, Starbucks filed a lawsuit against Sam Penix’s modest Oregon coffee shop Sambucks for alleged infringement. Starbucks contended that Sambucks’ name and logo bore striking similarities. Penix defended that “Sambucks” was simply a blend of her name and the term “bucks,” commonly associated with coffee. Additionally, her cheerful sun logo was distinct from Starbucks’ siren logo. Penix garnered support from the local community in response to the legal action. The dispute was resolved in 2003, with Penix opting to rebrand her shop with a new name and logo. Notably, she was not required to pay any damages. This case highlights the impact of trademarks on small enterprises and underscores the importance of conducting thorough searches prior to branding. Adidas, the renowned athletic apparel company, gained recognition for its distinctive three-stripe logo. In 2001, Adidas took legal action against Payless Shoes for selling shoes adorned with two and four stripes, alleging trademark infringement. Following an extended period of legal proceedings, Adidas emerged victorious in 2008, obtaining a substantial settlement of $305 million. This landmark outcome stands as one of the most substantial rewards ever granted in a trademark infringement lawsuit. Key Takeaway: It is crucial to vigorously safeguard your brand’s trademarks, as even slight modifications or imitations can tarnish your brand’s reputation and diminish the value of your intellectual property. 20 LAWYER MONTHLY JULY 2024 1 2 3 Apple Inc. vs. Apple Corps ‘The Conflict of the Apples’ Starbucks vs. Sambucks Coffee ‘Buck off’ Adidas vs. Payless Shoes ‘Three Stripes and Your Out’ Key Takeaway: It is crucial to establish clear boundaries between different industries when creating trademarks to prevent possible conflicts and misunderstandings. Key Takeaway: “We’re standing up for small business because corporate America is squeezing out the small businesses,” Buck said. “It’s real and it’s going to happen if we don’t do something.” Key Takeaway: The significant decrease in the profits calculation and punitive damages award by the court is remarkable for its critique of the plaintiff’s accounting approach towards the defendant’s profits, as well as its determination that punitive damages should be substantially lowered in cases where the harm is purely economic.

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