Are you thinking of registering a trademark for your business? If so, the first thing you should know is what exactly a trademark means. In essence, this is a special word, design, or picture that signifies your business and services. The key benefits of registering a trademark are:
- Acquiring legal safeguards for your brand
- Identifying where your products or services come from
- Protecting your business against fraud
It’s worth noting, however, that businesses don’t legally own the word or phrase they trademark. Instead, they own how the word is used in relation to their business. This simple detail was a key point of contention in the infamous Apple Corps vs. Apple Computer trademark case.
Apple Corps vs. Apple Computer
In 1968, the members of the Beatles launched a company called Apple Corps to gain greater control of their finances. The organization soon developed a recording label Apple Records, which produced some of their most iconic albums, such as Abbey Road and Let It Be. The Apple Corps logo, which quickly became a key part of the business, was a green apple.
In 1976, Steve Jobs founded Apple Computer (today known as Apple, Inc.). According to Jobs, the idea was to appear before Atari (the technology leader at the time) in the phone book. Right from the start, the logo was the stylized rainbow apple.
Pretty soon afterward, Apple Corps sued Apple Computer for trademark infringement. The dispute was eventually settled out of court in 1981, with Apple Computer paying $80,000 and promising never to enter the music business. Of course, back then, neither company could predict that technology and music would soon become so intertwined.
In 1991, Apple Computer created computers that could produce sound, and the two companies went to court again. This time around, Apple Computer had to pay a settlement of $26.5 million dollars to Apple Corps, but they received permission to be involved in digital music.
With the advent of iTunes in 2001, Apple Corps sued Apple Computer again. With the advent of iTunes in 2001, Apple Corps sued Apple Computer again. However, the Court ruled that the distribution of digital music was a different market than the distribution of physical music, and Apple Computer didn’t have to pay anything.
Even up until 2023, the Federal Circuit ruled against Apple’s registration of the Apple Music mark primarily since the use of this mark did not begin until 2015. While Apple Corps began its use of Apple Jazz in 1968 in association with gramophone records, the Federal Circuit decided that Apple Inc. could not tack its use of Apple Music used in association with live musical performances on Apple Corps’ 1968 priority use of Apple Jazz®. Bertini v. Apple Inc., 63 F.4th 1373, 1381 (Fed Cir 2023).
When Should You Register a Trademark?
The first thing we can take away from the above story is that companies that deal with music or computers should stay away from the word “apple.” The more important lesson, however, is that you should register a business trademark if you have a unique branding element that you want to protect from being used by others. Some examples that may require trademark protection are:
- Starting a new business
- Expanding internationally
- Creating a strong brand
- Launching a new service or product
Similar to the situation involving Apple, if you should expand the nature of the goods or services being offered under a trademark name, you should ensure that you are not infringing the trademark rights of another for similar goods or services.
For statewide protection, you can also register a trademark with your state. If you want to secure nationwide rights, you should trademark your products or services with the United States Patent and Trademark Office (USPTO). You also need to be mindful of non-statutory, common law protections that may exist in certain states concerning the use of somebody else’s mark.