Important Corporate Trademark Decisions
Microsoft has had a rich history of trademark and patent litigation. In Microsoft Inc. v. Lindows Inc., Microsoft filed suit claiming the “Lindows" mark and name was strikingly similar to the Windows mark which utilizes the universally recognized four colored banner. In this instance the court rejected Microsoft’s claim and raised its own questions concerning the generic nature of Microsoft’s trademark.
Rather than appeal, Microsoft settled with Lindows for 24 million, fearing the court might find their trademark deserved a loss of status. As part of the settlement, Lindows Inc. changed their name to “Linspire."
Another interesting case is that of Burger King of Florida v. Gene and Betty Hoots of Matoon, IL. The Hoots had remodeled a parking garage and turned it into a restaurant specializing in hamburgers, calling it, “Burger King." They registered Burger King with the state of Illinois as a trademark, only to learn later that Burger King was a federally registered trademark of Burger King of Florida. Unable to reach an agreement, the case went to federal court.
In a highly anticipated decision, the federal 7th Circuit Court of Appeals ruled that since Burger King of Florida had a federal registration, they had rights to the trademark anywhere in the United States except the area of Mattoon, where the Hoots had maintained previous authentic use. Therefore, the Hoots were allowed to continue use of the mark "Burger King" only in Mattoon, but Burger King of Florida retained the right to use the Burger King mark everywhere else.
Finally, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the trademark law under the Lanham Act was tested. This provision of the law protects the physical appearance, packaging and distinctive smell of a product.
Samara Brothers Inc. designed and produced a line of children’s clothing. Wal-Mart entered into an agreement with one of its vendors to manufacture a clothing product that was similar to the line that Samara Brothers produced. The clothes that Wal-Mart sold in its stores had only minor differences from 16 specific designs Samara Brothers offered. Wal-Mart marketed their own clothes as “knock offs."
Samara Brothers sent a cease and desist letter to Wal-Mart that had no effect and so a complaint was subsequently filed against Wal-Mart in the U.S District Court for the Southern District of New York.
The court ultimately ruled in favor of Samara Brothers Inc., and found Wal-Mart to be in violation of several provisions within the trademark statutes. The court concluded that there was sufficient evidence to support Samara’s assertion that their clothing designs could be legally protected under trademark law.