Apples have been stirring things up the Garden of Eden. Now an apple trademark dispute is threatening to become a headache for Woolworth, Australia’s largest retailer. It’s been reported that the folks at Apple Computer are challenging Woolworth’s new stylized logo in Australia.
The new Woolworth mark is shown here next to the Apple’s famous apple trademark. What do you think? Do you think there’s a likelihood of confusion? That a consumer will confuse one for the other?
Apparently, the folks in Cupertino, California think so. But in addition to the appearance of the mark, they are also concerned about the wide class of goods that the mark is being applied for, which in this case is electrical goods and technology. Since Woolworth has already forayed into mobile phones, it is not beyond the realm of possibility that they might one day be in the computer business. The broad class of goods overlaps Apples market and raises fear that it would create confusion in the marketplace.
What’s significant for our purposes is the reminder of how important classes are when it comes to the law of trademarks. Classes of goods or services serve to identify the market segments that a proposed trademark will operate in and are identified during the trademark application process.
Go too broad in identifying a class and you’re likely to come under fire, like Woolworth is experiencing. Go narrow and you’re more likely to co-exist with others who have the same mark in other market segments. The theory, generally speaking, is that marks which operate in different markets are less likely to cause confusion about the source of origin of the goods. So, for example, that Mrs. Fields, the cookie lady, wouldn’t be confused with Marshall Fields, the former Chicago department store.
The Apple case also serves as a reminder of how important trademarks in branding and marketing your goods and services. You can build a moat around your brand platform with them and pull up the drawbridge to keep the competition out. For more tips about trademark strategy, please see my prior blog posts on the subject: Trademark Strategy (part 1 of 2 — back to basics) and Trademark Strategy (part 2 of 2 — the synching process). Also, check out the Frequently Asked Questions page at the US Patent and Trademark Office website.