By Rudy Yuly
Dear business owners: tread
carefully the next time you feel like thanking your customers. Because believe
it or not, Citigroup owns that.
Citigroup managed to wrangle
themselves a trademark on “THANKYOU” (along with some catchy variations), and
now they’re suing AT&T for saying “thanks” to their customers. The claim
states that Citigroup is concerned about “customer confusion,” and they don’t
think it’s fair that AT&T might actually be
making money by saying thanks. Because only Citigroup is
supposed to be able to make money that way.
The legal plot thickens
further as the source of the complaint is revealed: a rewards program launched
by AT&T called “AT&T Thanks” that connects its cell service with a
credit card backed by—you guessed it—Citigroup. You’d think that AT&T would
have stayed away from that verbiage knowing they would be using Citigroup’s
credit services—Citigroup does, after all, use “thank you” all over the place
in their marketing, even going so far as to own the domain www.thankyou.com. But apparently the wireless
technology right hand didn’t talk to the financial services left hand, and a
whole lot of lawyers are now reaping a windfall.
It’s a weird story, but one
you might want to keep in mind when creating trademarks for your own business.
Wait, can I
trademark a common phrase too?
Isn’t the very purpose of a
trademark to provide a distinct mark that clearly, specifically identifies one
unique business or service? Why would someone trademark a phrase like
“THANKYOU” in the first place? Everybody says “thank you,” right?
True. But everybody also says
“Apple.” So if you think your business might really want to trademark some
phrase or word everyone has already heard—like “Let’s roll,” for
instance—you might actually be able to do it. The key thing to keep in mind when it
comes to registering common words and phrases is that context is everything. In other words, it all
depends on what you’re selling. If you’re selling lemons, for instance, don’t
even try to get a trademark for “Lemon” (though it might work for a used car
dealership).
There’s good advice out there on how to
avoid trademark infringement, or how to go about getting a trademark in the first place. One
place to start educating yourself on the basics is the United States Patent
and Trademark Office. There you will find a video offering instruction on
how trademarks affect the process of selling products and services, as well as
a walkthrough on the difference between trademarks, patents, copyrights, domain
names, and business name registrations.
Trademark and
similarity
Of course, there are many important factors
beyond trademark infringement to think about when
you’re trying to pick an appealing name. But when you’re thinking specifically
about the possibility of trademark infringement, you need to keep two kinds of
similarity in mind.
The first is similarity of the
business or service. Two (or more) companies can use the same trademark,
provided they are not in similar industries. Thus both a computer maker and
record company can (and do) have the same tradename: Apple. The second is similarity
of the word or phrase. If you want to name your fledgling retail store “Apple’s
Emporium,” you better not sell computers. Or records. Otherwise you’re asking
for trouble—even if your last name is Apple.
If you’re close to the line on
either of those types of similarities, consider stepping back and reassessing
how you’re thinking about your brand, and how attached you want to be to a
certain word or a clever turn of phrase. Maybe spending a little more time in
the brainstorm/creative phase will yield a better—and less potentially
litigious—option.
Be prepared for a fight
Still, you can beat your head
against the wall for only so long, and the sad truth is that no matter how much
due diligence you do, or how hard you try to be original, there’s always some likelihood of
confusion when it comes to trademarks. Crazy as Citigroup’s lawsuit sounds,
when it comes to trademarks, suits of this nature occur with alarming frequency.
All kinds of alleged trademark
infringements get people sued. Things can get downright
strange, in fact. Take Strange Brewing v.
Strange Brew. Or Strange Music v.
Strange Music.
Is Citigroup going to win
their lawsuit? Like everything in the heavily nuanced world of trademark law,
the answer is, “it depends.” Essentially, the key question is this: Can they
convince the court that AT&T is really confusing its customers or weakening
the impact of their “THANKYOU” trademark? As in, “Hey, honey, this email says
‘thank you.’ Is it my bank statement or cellphone bill?”
But whatever the outcome, the
case serves as a reminder to put some thought—and research—into your choice of
trademarks. And if you think there’s any possibility that your clever name or
slogan might infringe on someone else’s, consult an
intellectual property attorney.
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