I cringe every time prospective clients tell me they “didn’t find anything” after using the Trademark Office’s search tool because I know from experience how weak and unreliable that tool is.  This type of search will most often not catch variations of words, common misspellings, novel or intentional misspellings, verb conjugations, etc.  The Trademark Office’s search tool is really only for finding identical trademarks, which I always encourage my clients to do prior to hiring me to conduct a more comprehensive federal trademark search to find confusingly similar marks (which is the legal standard for trademark infringement).  Clearly, there is little reason for me to perform my search if their search already revealed an obvious obstacle to registering and/or using their trademark.

So, I begin to explain to my prospective client that it really isn’t a good idea to solely rely on the search results generated by the Trademark Office and that a more comprehensive search is something that he should strongly consider.  Not surprisingly, he was reluctant to spend the $250 I charge to perform such a search using proprietary software for which I pay an incredibly outrageous subscription fee to use (seriously, it’s highway robbery).  As a start-up business, he was operating on a very tight budget and he felt that his clearance search was sufficient.  But, after reminding him that a $250 trademark search is at least 100 times less expensive than having to defend a trademark infringement suit (not to mention the money he would waste by filing a trademark application just to be rejected on the basis of another registered mark that would have been revealed in my search), he made the wise decision to spend the $250.

Although I obviously cannot reveal the exact trademark on which I conducted my search due to attorney-client confidentiality, the following situation nicely illustrates what actually occurred with my client’s search.  Let’s say hypothetically that my client’s trademark was CLIFF JUMP and that he wanted to use the trademark for classes and seminars in the fields of personal and organizational growth and development.  When you type CLIFF JUMP into the Trademark Office’s search system, you get the following screen indicating that no records match the search query:

So, my client was technically correct in that he “didn’t find anything.”  He just spent 250 bucks for me to tell him what he already knew, right?  Not at all.  My more comprehensive search revealed two registrations owned by the same company for the mark CLIFF JUMPING (Reg. Nos. 3672445 and 2761445), both of which are registered for educational services in the fields of personal and organizational growth and development.  Unquestionably, the Trademark Office would refuse registration of my client’s CLIFF JUMP mark on the basis that it is likely to cause confusion with these registrations for CLIFF JUMPING.  In addition, there is the possibility that the owner of these registrations would challenge my client’s use of the CLIFF JUMP trademark if he commenced use of it in connection with his services.  Probably not a winning case for my client, wouldn’t you agree?

I think being told bad news about the results of a trademark search is a bittersweet moment for many people looking to adopt a brand new trademark.  Many people who come to me already have their heart set on a particular trademark and are extremely disappointed to hear that their mark is unavailable.  But, on the other hand, I think they’re also relieved to know that they didn’t invest thousands of dollars into developing and marketing a problematic trademark.  Well, that’s of course assuming they hired a trademark attorney to clear their mark before creating labels, product packaging, websites, signage, business cards, and advertisements.

So, it’s back to the drawing board for my client, which maybe is not such a bad place to be considering where he could have been had he imprudently chose to rely on the search he conducted himself.

Before I even attempt to answer that question (and I’m not really sure that I can), it’s probably best that I first explain the difference between the “TM” and the ®.  The ® is a symbol that may only be legally used in connection with a federally registered trademark.  It may not be used until the trademark registration is granted by the Trademark Office and is meant to give fair notice to consumers and competitors that the particular trademark is federally registered.  Furthermore, as a practical matter, the ® acts as a strong deterrent to those who might be thinking about adopting an identical or confusingly similar trademark and, in the minds of some consumers, the ® may lend some credence to the product/service with which the trademark is used.  Having said that, the improper use of the ® with unregistered trademarks is extremely widespread, especially by small businesses that are unfamiliar with the federal trademark laws.  So, just because you see a ® next to a trademark, don’t assume that the trademark is actually registered.  There’s a pretty decent chance that it’s not.

On the other hand, the TM (which obviously stands for “trademark”) has zero legal significance whatsoever.  It is merely a convention that was started many years ago to indicate that trademark rights are claimed in a particular name, logo, or slogan.  Most often, you see the TM used in association with unregistered trademarks or trademarks that are currently pending with the Trademark Office but have not yet matured into registered trademarks.  The TM does not mean that the owner of the trademark actually possesses any trademark rights or that the trademark doesn’t infringe the rights of another trademark owner.  That’s not to say that the TM shouldn’t be utilized because it may still deter some people from adopting the same or similar trademark.  But, probably not.  And because the TM has no real significance, feel free to use it next to your personal name or in random places throughout™ anything you write.

Although use of the TM or ® is completely optional, the Lanham Act (which is the primary federal trademark law) gives a valuable incentive to owners of registered trademarks to use the ®.  Although I’m not usually into reprinting incomprehensible federal statutes, below you will see that I have made an exception and pasted the text of 15 U.S.C. § 1111, which deals with the ® and the consequences for not using it:

Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.

When translated into English, this law states that an owner of a federally registered trademark cannot recover any damages or profits from an infringer if the ® wasn’t being used unless the owner can prove that the infringer had actual notice of the federal registration (yeah, good luck proving that).  So, even though a federal registration functions as constructive notice to the entire world (because the registration could be easily searched for and found in the Trademark Office’s records), the ® must still be used if a registered trademark owner wants to recover monetary compensation from a potential infringer.  And who doesn’t want take a dirty little infringer to the cleaners?

Now that all of you are educated about proper trademark notice, let’s return to Emmett’s question about why Google doesn’t use the ® next to many of its well-known trademarks.  If you browse the federal trademark records, you will find that Google owns registrations for GOOGLE, GMAIL, PICASA, YOUTUBE, ADWORDS, BLOGGER, and DOUBLECLICK.  However, as the screen shots below indicate, Google uses only the TM or nothing at all next to these marks:

To be honest, I am dumbfounded as to why Google doesn’t use proper trademark notice, most notably when it comes to the word GOOGLE.  You would think that Google would do everything it possibly could to protect its most valuable trademark and to ensure that the public continues to recognize it as a trademark and not as a generic synonym for the word “search” (e.g. “I will Google that”).  Oftentimes, registered trademark owners shun the ® because it looks too stodgy and “corporate” (imagine the rock band Rage Against the Machine using the ® next to its name, which it could since it owns a registration for it).   So, perhaps Google is simply attempting to preserve its image as a fun and hip company by not using the ®.  And, let’s face it, although the monetary incentive to use the ® is important for smaller businesses, I’m pretty sure Google could afford to take every person, company, and organization on this planet to court for trademark infringement ten times over without regard to whether it could be awarded a single dime by a judge or jury.

Still, I strongly believe that all registered trademark owners (including Google) should use the ® whenever possible, especially those who may not have the financial means to bring an infringement lawsuit without knowing that an award of monetary damages and the infringer’s profits is on the table.   So, Google®, if you are reading this, I would be glad to advise you further on proper use of trademark notice.  Just give Morris Turek™ a call.

For those of you who may not know much about the iTunes App Store, Apple continuously ranks the top 50 apps based on the number of copies downloaded within a certain period of time (though I am still unclear as to exactly what that time period is).  Well, as of 11:30 on February 14, 2010 (Happy Valentine’s Day!), the #2 ranked paid application in the App Store is “60 Mario and Friends: Old Games are Back.”  This app is distributed by a company called Isayonline Services and sells for a relatively modest $2.99.  Two screenshots of the application listing in the App Store are shown below:

Of course, the infringing nature of this application is obvious to anyone who’s even remotely familiar with video games.  As you can see, this application developer prominently uses depictions of famous characters from classic Nintendo games in both the application icon and in the application itself.  Furthermore, the app’s title boldly incorporates the name of the iconic chunky Italian plumber that put Nintendo on the map back in the mid-1980′s with its release of the game “Super Mario Bros.” (which was bundled with practically every original Nintendo system ever sold).  Moreover, the app can be found on the App Store in the “games” category, even though if you read the application description carefully, all this app provides is 60 different sounds from these classic games (which is likely a copyright infringement) and not the actual games themselves.  I’m glad to see that even this developer has some boundaries it won’t cross!

I think many of you would be surprised to learn that the developer of Ripin’ Off The Classics is probably making somewhere between $10,000 and $15,000 per day (30% of which goes to Apple as a commission) off an application that is essentially a compilation of non-original and infringing material that likely took a few hours to throw together.  Moreover, it is my understanding that developers get to choose which category of apps (i.e. games, utilities, sports, news, etc.) they want their apps to be listed under.  Contrary to what the title of the app may suggest, “60 Mario and Friends: Old Games are Back” is not a game anymore than a collection of duck calls would be considered a game.  Yet, it’s listed in the “games” section of the App Store.  In fact, if you read the 700 or so reviews and ratings left by purchasers of the app, a substantial portion indicated that they thought they were purchasing the actual games and were quite disappointed when all they got for their $2.99 was 60 stupid sounds that probably could be made for free with a few household utensils.

Needless to say, I find it absolutely incredible that Apple would allow such a blatant and egregious infringement to occur in its App Store.  But, like I’ve written about in the recent past, Apple often displays a flagrant disregard for the intellectual property rights of others.  I do not think it’s an exaggeration to assert that Apple is like the Napster of iPhone applications.  But Apple is even worse than Napster because Apple actually reviews and approves all apps in the App Store and then takes 30% of every application sold.  Even Napster didn’t go that far!  I mean, I understand that Apple is not going to catch every single infringing application that’s submitted to it for its review and I don’t expect it to, but in a case like this where a developer uses well-known and highly recognizable names and characters that would be undoubtedly familiar to the Apple employees who review newly submitted apps, there is no question in my mind that Apple is knowingly and willingly contributing to the infringement and should be held at least partially liable for doing so.

But, to be honest, I don’t really care too much about Nintendo’s intellectual property rights or the rights of any other huge corporation that has the money and resources to go after both Apple and the infringing developers if they really wanted to.  It is inconceivable to me that Nintendo doesn’t know what’s occurring in the App Store.  If it chooses not to put the hammer down, then why should anyone else care?  No, what bothers me is Apple’s arrogant indifference to the frustration and damage its business practices and policies cause to the thousands of application developers who make a conscious decision not to intentionally infringe upon the intellectual property rights of others and to the consumers of iPhone applications who are basically tricked into buying something that isn’t what it appears to be.  In my opinion, if Apple doesn’t change its ways, it is going to alienate the very people it depends on to make the iTunes App Store the gravy train that it is for Apple and will likely find itself defendant in some pretty nasty lawsuits.  If Napster could be shut down for similar behavior, I see absolutely no reason why Apple could not suffer a similar fate.

Unlike most people who have a life outside of trademark law, this article compelled me to dig a little deeper into the history of WHO DAT from a trademark standpoint.  And I’m glad I did because the Trademark Office’s records tell a story that will make your head spin.

On November 1, 2004, an individual by the name of William Myers filed an intent-to-use application to register WHO DAT for various clothing items, and about five months later, filed another intent-to-use application for WHO DAT for toys, games, dolls, and action figures.  In early 2006, the NFL and the New Orleans Saints filed oppositions (which were later consolidated into a single opposition) against both applications on the basis of priority in the WHO DAT name and likelihood of confusion, as well as on the basis that Mr. Myers’ use of WHO DAT would falsely suggest a connection between himself and the New Orleans Saints.  The Notice of Opposition alleged that the Saints owned two Louisiana state trademark registrations dating back to the ’80s for WHO DAT! and that the mark had become “famous” prior to Mr. Myers filing his applications.  Well, after nearly three years of litigation, it appears the parties settled the matter because in December 2008, the NFL and the Saints withdrew their opposition without prejudice.  Mr. Myers’ applications are both active and are currently pending.

This is where the story starts to get interesting.  On March 4, 2002 (which you should note is approximately two and a half years before Mr. Myers’ filed his first application for WHO DAT), an individual named Ronnie Lee Parker applied to register the mark WHO DAT? BLUES BAND for “entertainment, namely, live performance by a musical band,” which matured into a registration in September 2004.  Over five years later, on October 6, 2009, a company called Who Dat?, Inc. filed a Petition to Cancel against Mr. Parker’s registration.  In reviewing the substance of the Petition to Cancel, it is clear that Who Dat? filed its challenge on the basis of its prior use of the name WHO DAT? and likelihood of confusion.  But, under the law, a registration that is over five years old is not subject to cancellation on such a basis.  So, you would think that Mr. Parker hired a trademark attorney to tell Who Dat? to take a long walk off a short cliff, right?  Well, that’s not what the records indicate.  Instead, Mr. Parker assigned the registration to Who Dat? on January 6, 2010 (hopefully for a boat-load of dough) and then, a day later, Who Dat? filed a brand new application for WHO DAT? for various clothing and music items.

Now, this is a good time to point out that Who Dat?, Inc. filed a whole bunch of intent-to-use applications for the mark WHO DAT? for a wide variety of products back in the late ’80s and early ’90s (Serial Nos. 73745956, 74218862, 74218866, 74459277, 74459278), all of which went abandoned prior to registration.  In addition, Who Dat? obtained a registration for WHO DAT? for soft drinks in 1992, but it was canceled in 1998 for failure to timely renew it.

Clearly, Who Dat?, Inc. had no federal rights in any WHO DAT trademark until it obtained Mr. Parker’s registration for WHO DAT? BLUES BAND through an assignment just last month.   As a result, Who Dat? now has federal priority in a federal trademark registration incorporating the phrase WHO DAT dating all the way back to 2002.  Why is this important?  Well, because it now gives Who Dat? priority over five other applications that were filed in just the past four months by different individuals and companies for marks that incorporate WHO DAT (not to mention the two applications owned by Mr. Myers dating back to 2004).  These 5 new trademark applications are for the following marks:

- WHO DAT JE CROIS  (FYI: JE CROIS translates to “I Believe”)

- WHO DAT 19-0  (which, for obvious reasons, has been voluntarily abandoned by its owner)

- WHO DAT BAT COMPANY

- WHO DAT!!

- WHO DAT SAY THEY GONNA BEAT ‘DEM SAINTS? (hopefully the owner of this application will call me when she is challenged by the Saints)

So, in conclusion, Who Dat?, Inc. was pretty darn savvy in acquiring Mr. Parker’s registration since it will now be in the position to oppose all of these applications based on prior use and registration.  But, I think the question remains as to whether Who Dat? will escape a Super Bowl-sized challenge to its application by the NFL and/or New Orleans Saints.  We’ll just have to wait and see.

The story begins nearly 13 years ago on April 25, 1997, when a Delaware company by the name of A.T.X. International, Inc. filed an intent-to-use application to reserve the name IPAD for computer hardware and software products that are eerily similar to Apple’s new device.  This application never matured into a registration because A.T.X. voluntarily withdrew it in mid-1999.

Next, on November 25, 1998, a company called The Audiogroup, Inc. (now the Niles Audio Corporation) applied to register the name I PAD for what basically amounts to a high-tech control unit for audio and video equipment.  The Trademark Office refused registration on the basis that I PAD was merely descriptive of The Audiogroup’s products.  In response, The Audiogroup amended its application to seek registration on the Supplemental Register (which is basically where wannabe trademarks get registered) and filed documentation showing use of the trademark.  The Trademark Office registered the mark on September 26, 2000 and the registration is still active today, although it needs to be renewed this year.

Then, on April 22, 1999, a Washington D.C. corporation by the name of Emergent Technologies, Inc. applied to register the term IPAD for “a service where users can access via the Internet, applications and information hosted on remote servers.”  On May 22, 2000, this intent-to-use application went abandoned due to Emergent’s failure to respond to a communication issued by the Trademark Office.  Unfortunately, the content of this communication is not accessible via the Trademark Office’s website so I am not exactly sure why the Trademark Office preliminarily refused registration of Emergent’s trademark.

On November 23, 1999, a California company named Proview Technology, Inc. filed an intent-to-use application for I PAD for computer monitors.  The Trademark Office initially suspended action on Proview’s application pending the disposition of Emergent’s prior-filed application noted above.  Once Emergent’s application went abandoned, the Trademark Office approved Proview’s application, but then withdrew such approval and refused registration on the basis that I PAD was merely descriptive of Proview’s products.  Although the attorney for Proview filed a well-written argument to the contrary, the Trademark Office maintained its refusal and Proview’s application went abandoned on March 27, 2003.

Next, on February 7, 2000, Niles Audio Corporation (owner of the I PAD registration discussed earlier), filed another intent-to-use application for I PAD for products related to those for which it already owned a registration.  Not surprisingly, the Trademark Office once again refused registration on the basis that I PAD merely describes a feature or characteristic of the products.  After unsuccessfully attempting to persuade the Trademark Office to withdraw the rejection, Niles simply let the application go abandoned on December 31, 2003, most likely because it had no use of the trademark and, therefore, could not amend its application to seek registration on the Supplemental Register as it did with its previous application.

Over the next few years, a number of different companies filed applications for IPAD or I-PAD (Serial Nos. 76006482, 76014064, 76213930, 76216311, 78028207, 78291387, and 78530901), all of which were for computer hardware, computer software, computer peripherals, or other computer-related products.  Every one of them went abandoned prior to registration.  Well, that is except for one tiny little application for IPAD owned by Fujitsu since March 2003.  This application is for a “hand-held computing device for wireless networking in a retail environment.”  According to the application, Fujitsu’s use of IPAD commenced back in 2002.  The application was published on September 1, 2009 and Apple has been granted by the Trademark Office a deadline of February 28, 2010 to challenge it.  Honestly, on what basis Apple plans to oppose the application is unclear, but I think it will likely hang its hat on its prior use and registration of IPOD, to which IPAD is pretty darn close (dare I say confusingly similar?) in both appearance and sound.  I should also note that there is an existing registration owned by Mag-Tek, Inc. for IPAD for “keypads for entry of personal identification numbers in e-commerce,” but those devices are quite different from Apple’s new iPad computer such that confusion is probably unlikely.

As for Apple’s own very recent application for IPAD (which was actually filed in the name of a company I assume is related to Apple called IP Application Development, LLC), we’ll just have to wait and see whether the Trademark Office refuses registration on the basis of Fujitsu’s pending application, Mag-Tek’s registration, Niles Audio Corporation’s registration, and/or that Apple’s mark is merely descriptive of its products.  But one thing is for sure:  prosecuting and defending Apple’s IPAD trademark application will likely “pad” the pockets of some very lucky lawyers.

As a recap, two weeks ago I discussed the questionable and risky practice adopted by some iPhone app developers of incorporating famous trademarks into the titles of their applications or in the icons associated with their applications.  Then, in last week’s post, I talked about the legal issues and ethics of using famous trademarks as “behind the scenes” keywords to increase the visibility of apps that are entirely unrelated to the keywords.  Now, in the final part of my series, I am going take a look at when using a trademark may be an acceptable and defensible business practice.

I commenced my investigation with a search of the extremely famous “NBA” trademark.  The search revealed dozens of apps, some of which are actually sponsored by or affiliated with the National Basketball Association.  One app that caught my eye is titled “Pro Basketball Live,” a screenshot of which is shown below:

As you can see, this app was created by iApp Ventures, LLC.  This developer did not use “NBA” in the title of the application, although it did use the trademark in the description of its application and, undoubtedly, as a “behind the scenes” keyword.  This application basically provides news and information about the National Basketball Association.

I then conducted a search of the trademark “CNN” and, again, dozens of apps were returned in the search results, including one called “Easy News”:

Again, this app was not created by CNN and the trademark does not appear in the title, although it can be found in the description and most likely in the keyword list.  According to the description, this app gives one touch access to “20 news sites,” one of which is the CNN website.

Next, I performed a search of the trademark “PlayStation,” which is a well-known video game console sold by Sony.  The search revealed the following app called “Cheat Codes”:

This app was developed by Prima Games and is a collection of cheat codes for games released on all of the major video game systems, including the PlayStation.  Because the “PlayStation” trademark does not appear in the title of the app or in its description, I would bet my bottom dollar that the trademark is used as a keyword by Prima Games.

Finally, I typed in the phrase “Papa Johns,” which, if you’ve been living under a rock for the past decade, is a pizza delivery chain that operates across the United States (except perhaps in New York City where such “pizza” would be scoffed at by the locals who know what real pizza is).  An app titled “LocationFox – Pizza Parlors” came up in the search results and is depicted below:

This app assists users in locating pizza restaurants, including Papa Johns.  The developer does not use the trademark in the title of its application, but does include it in the description and probably as a keyword as well.

So, I’m sure that all of you see how these trademark usages are different from those explored in my previous two posts.  In these cases, the content, purpose, or function of the apps are directly related to the trademarks selected.  They are not being prominently incorporated into the names of the apps (which can cause substantial consumer confusion), nor are they being used in connection with apps that have no relation whatsoever to the keyword (such as Slug Bug, GW Monkey, and the others discussed in Part 2 of this series).  Instead, these app developers are using trademarks in what I would consider a descriptive sense to inform consumers about the nature of their apps.  Of course, although I would consider such use to be a “fair use,” it’s always possible that owners of famous trademarks may believe otherwise and attempt to put the kibosh on such use.  All the more reason to consult with a trademark attorney before using a trademark that isn’t yours.

Well, that’s all I have to say about the App Store.  Time to go download an infringing app or two.

I decided to begin my investigation with a search of some famous trademarks in the video game industry.  Starting with a tribute to the best video game console ever manufactured, I typed in the word “Atari.”  Although the search revealed a number of classic Atari games actually created and distributed by the Atari corporation (such as the unbelievably awesome Centipede and Missile Command), it also returned the following app titled “Slug Bug.”

Come on, you remember playing the great Slug Bug on your Atari 2600, right?  No you don’t.  Slug Bug is created by a company called Axosoft, which as far as I can tell has no relation to Atari whatsoever.  Well, except for the fact that Slug Bug is nothing but a cheap rip-off of the classic Frogger, which was first made available on the Atari gaming system back in the 80′s.

Next, I conducted a search on the word “Nintendo.”  As with Atari, the search returned many apps that are at least related to Nintendo in some manner, including cheat codes, game guides, and even some games that were created specifically for Nintendo (although none of these apps appear to be created or distributed by the Nintendo company itself).  But, my search also revealed the following game called “GW Monkey.”

Needless to say, members of my generation have very fond memories of rushing home from elementary school to sit down and play GW Monkey on the Nintendo that we begged and begged our parents to buy us.  Well, I bet you we would if GW Monkey ever existed for the Nintendo.  Maybe the developer of this app, Aaron Ardiri, got GW Monkey confused with Donkey Kong.

This left me wondering why these apps are coming up in my search results when (1) the keywords I searched do not appear in the title of the apps, (2) the keywords are not in the description of the apps, and (3) the apps are wholly unrelated to the keywords I searched.  Fortunately, I have an acquaintance who is familiar with the App Store and he informs me that when a developer submits an app to Apple for its review and distribution, the developer is allowed to also provide 100 characters of keywords or key phrases, separated by commas, that are hidden from the view of consumers.

Clearly, developers such as Axosoft and Mr. Ardiri are using well-known trademarks in their list of keywords and key phrases in order to enhance the visibility of their programs in the App Store, which is crucial now that the App Store contains close to 130,000 apps.  Let’s face it, nobody in their right mind who is looking for games to download onto their iPhone are going to specifically search for “Slug Bug” or “GW Monkey,” but undoubtedly, many people will perform a search for “Atari” and “Nintendo.”  Although these developers may not necessarily be causing a whole lot of confusion, they are certainly riding on the goodwill, reputation, and popularity of these famous trademarks in order to get their apps in front of as many eyes as possible.  I guess there could be what is commonly referred to in the trademark world as “initial interest confusion,” which is when a consumer is lured into performing a preliminary investigation into a particular product or service due to the use of another’s more well-known trademark, but quickly realizes that the product or service is not actually related to the trademark owner.  Of course, if consumers like what they see regardless of the lack of affiliation with the owner of the famous trademark, then they might purchase the product/service anyway.  This is what these developers are partially counting on.

This business practice is all over the App Store.  The following is an app that was revealed in a search of the Major League Baseball acronym “MLB:”

And here is one that was returned in response to a search for both “Mickey Mouse” and “Mickey:”

And, finally, here’s one that came up in a search for the popular video game console “Wii:”

In my opinion, this is a highly unethical business practice that should not be employed by application developers.  But, evidently, developers have nothing to fear because nobody, including Apple, is policing the App Store.  Although I certainly don’t condone such infringing behavior and would strongly advise against such behavior (I am an upstanding trademark attorney after all), the fact remains that if one were to balance the low risk of being sued with the potentially lucrative reward of using another’s well-known trademark as a keyword, there is no question in what favor that equation tilts.

Oh, and I’ve decided to make this a three part series rather than just two.  Aren’t you the lucky ones!  Check it out next week.

Over the past six weeks, I have become increasingly aware of some interesting trademark issues related to the iTunes App Store.  This post is the first in a two part series which looks at how application developers are putting themselves at unnecessary risk of being sued for trademark infringement and how they can reduce such risk.

This idea all started when I was browsing the iTunes App Store for news-related applications and quickly came across the following app:

Now, as you can see, the name of this application is called “Fox News Mobile” and the icon incorporates a nearly identical reproduction of the actual Fox News logo and font style shown below:

Since I find Fox News to be somewhat entertaining and moderately informative (please don’t hold that against me), I was about to pay a couple of bucks for what I thought was the official Fox News application when I noticed that its developer was a person named Joseph Nardone.  I thought it was a little strange that the developer was seemingly an individual and not Fox News itself or one of its media divisions.  I decided to conduct a search in the App Store for “Fox News” and found a completely different application called “Fox News Mobile Pro” shown below:

Unbelievably, this application is unrelated to the “Fox News Mobile” application and is also not the official Fox News application.  In fact, as far as I can tell, there is no “official” Fox News application in the App Store.  The “Fox News Mobile” and “Fox News Mobile Pro” apps are basically browsers that read and optimize articles from the Fox News website.

Being the inquisitive trademark attorney that I am, I decided to check out what other questionable third-party trademark uses I could find in the App Store.  I began with a search of the famous trademark “NFL” and came across the following two applications:

The first application is named “NFL: Football News” and the icon incorporates a likeness of the well-known NFL emblem.  The second application is called “iBet NFL 2010″ and is basically a program which allows you to track all of your bets on professional football games and to receive live updated odds.  Needless to say, neither of these apps are sponsored or endorsed by the National Football League.

I then performed a search of the well-known “NCAA” trademark, which revealed the following application not affiliated with The National Collegiate Athletic Association:

Does that NCAA stylized font look familiar?  It should because it’s the same font used by the actual NCAA, as depicted below:

Next, I conducted a search on the trademark “Disney” and the following app named “Disney Facts” was revealed:

Note that the icon incorporates the very recognizable Mickey Mouse silhouette.

Finally, I searched the word “Starbucks,” which revealed the following  “Find a Starbucks Coffee” application:

So, what should app developers take from the above examples?  Well, clearly, there is no compelling reason or necessity for iPhone application developers to use the Fox News logo, NFL emblem, NCAA stylized font, or Mickey Mouse silhouette in connection with their apps other than to attract and deceive purchasers.  In my opinion, such use is a blatant infringement of these trademarks because it is likely to cause confusion as to the sponsorship, affiliation, or endorsement of the apps with the owners of these famous logos and emblems.  This should be avoided by application developers unless they have received permission from the trademark owners to use these logos/emblems.

Similarly, there is no compelling reason or necessity for iPhone application developers to incorporate the trademarks NFL, NCAA, or NHL as part of the name of their sports-related apps because there are generic phrases available for use as a substitute (e.g. “professional football,” “college basketball,” “professional hockey”) that readily inform purchasers of the content or theme of the apps.  Developers should recognize that many businesses (such as the video game company EA Sports and various apparel companies) pay millions of dollars for a license to use these trademarks in connection with their products and are required to abide by specific guidelines so as to ensure that the trademarks are not tarnished in any way.  This is why you can bet your bottom dollar that the National Football League would not be happy with its famous NFL trademark being used in connection with a gambling application such as “iBet NFL 2010.”

The tougher issues arise when developers use famous trademarks such as “Fox News, “Starbucks,” and “Disney” in the names of their applications without incorporating any of their associated logos, emblems, or distinctive stylized fonts.  In these cases, there are no generic substitutes available and developers arguably need to use such trademarks to refer to the theme, function, or content of their applications.  These are certainly not easy cases to deal with and, therefore, I think it’s important that developers consult with a trademark attorney in order to receive an opinion as to whether their particular use of a trademark would be considered non-infringing.

The bottom line is that iPhone application developers need to be aware of these kinds of trademark issues because, like any other business, they can be sued for infringement and can be on the hook for substantial monetary damages and legal fees.  Just because an app is free or only a couple of dollars doesn’t mean that the owner of a famous trademark is going to ignore the infringement.  Therefore, they should respect the intellectual property rights of others to avoid potential headaches down the road.

Part 2 of this series is coming next week.  Stay tuned!