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Trademarked names in different industries

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breakaway

Member
I remember how the World Wrestling Federation had to change its name to WWE because the World Wildlife Federation claimed WWF was trademarked by them. But pro-wrestling is completely different from animal preservation. How could they enforce it?
 


quincy

Senior Member
First, there was both a World Wildlife Federation and a World Wildlife Fund. These are two different animal protection and animal right's organizations, sharing similar names with a similar purpose, but they are not connected. World Wildlife Fund is the one that brought the suit against the World Wrestlers for trademark infringement. Ironically, perhaps, the World Wildlife Fund is now the World Wide Fund for Nature (although it is still WWF in the U.S. and Canada), so only the World Wildlife Federation remains a WWF worldwide.

There are several factors that are considered when deciding whether a trademark owner can prevent others from using the same or similar mark. Consumer confusion is just one. Since World Wildlife Federation and World Wildlife Fund both used WWF in their similar business, as identifiers, that did cause confusion, and continues to (there is a notice on the Federation's site that the two organizations are not connected), more so than the Wrestling Federation would in using WWF. Perhaps because the animal groups ARE working for a similar purpose they were not as concerned about the confusion their names cause. I don't know.

But what is probably the reason for the World Wrestler's having to change their name from WWF to WWE is that there are also federal and state laws, "anti-dilution statutes", that can help a trademark owner prevent others from using the same or similar mark based on the mark's strength or reputation. If the mark is famous, as is the World Wildlife Fund/Federation's WWFs, there is potential for a weakening of the mark's strength in use by World Wrestlers, and "tarnishment" of the mark through overuse, even when the wrestler's are using WWF in a different context. There were many wrestling "scandals" and controversies at the time of the suit brought by the World Wildlife Fund, so tarnishment may have been a deciding factor.

So, even when consumers are unlikely to confuse animal protection groups with wrestler's, there can still be trademark infringement.
 
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davezan

Member
IIRC the two groups had an agreement on that. At some point the wrestling group broke it
somehow, and the conservationists went in for the kill.

Of course, one of the things the conservationists wanted was the domain name. Too bad
they weren't able to obtain it then, and it appears they've decided not to anymore after a
recent failed attempt.
 

quincy

Senior Member
After a little more research, I discovered that the World Wildlife Fund and the World Wrestler's Federation did have an agreement, made in 1994, that would allow the Wrestler's to use WWF as an identifier, but it would limit the World Wrestler's use of the WWF initials overseas. The World Wrestler's apparently violated this agreement in 2000, and the World Wildlife Fund sued them for unfair trade practices - a suit the World Wildlife Fund won. In 2002, after an appeal was lost, the World Wrestler's Federation changed its name to World Wrestler's Entertainment, and its web address to wwe.com.

The World Wildlife Fund also changed its name, to World Wide Fund for Nature (although it is still known as World Wildlife Fund and WWF in Canada and the U.S.), and it maintains three different web addresses: wwf.org, worldwildlife.org and worldwildlifefund.org.

The World Wildlife Federation continues to refer to itself as WWF, but it is an organization run by the Universal Ethician Church and has no connection to the World Wide Fund for Nature, other than in its similar efforts to protect endangered animals and in conservation.
 
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breakaway

Member
cool info! thanks for that

I also have a follow up question....I take it that normally, it is okay to use a trademark name in different industries as long as the company isn't too famous.
So what happens if lets say many years ago Nike started their company in relative anonymity....someone copies their name "Nike" for a fastfood store.....and then years later Nike (the shoe company) becomes very popular. Would they be able to force the fastfood store to give up their name?
 
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quincy

Senior Member
It depends on a lot of different things.

Nike, for instance, is an unusual and creative name and, as such, it is a trademark that is considered "inherently distinctive" - for either a fast food restaurant or for a shoe company. Inherently distinctive marks are afforded the most protection of any mark under trademark law. Because the name is inherently distinctive, two companies, no matter how different they are, would usually not both be allowed to register this name (if they somehow coincidentally made up the same name or one "stole" the name from the other). And then, the general rule with trademark law would be that the business that used the mark first could be able to prevent others from using it.

If Nike Fast Food used the name first and registered it, Nike shoes would have a tough time in court if they tried to stop the use - what they would probably do is try to purchase the name from Nike Fast Foods or work out some agreement with the restaurant so they could continue to use the name that they made famous. But, because there is not likely to be consumer confusion anyway, both could potentially be able to use the name, unless the fast food place decided the shoe company's use of its unique name was infringement.

A better example than Nike would be, perhaps, McDonald's. When a business uses a last name as an identifier, the name receives the least trademark protection under federal and state laws. With many people named McDonald, many companies could use this name to identify their hardware store or pet store or whatever. No problem, generally.

However, although trademark law primarily tries to make sure that trademarks do not cause consumer confusion, because McDonald's is now famous and the name has now become synonymous with fast food, courts are more apt to prevent other uses of the name, under anti-dilution laws, that tarnish the name, or that "trade" on the reputation of the name. You would probably be stopped from opening a McPastry shop or even a McFurniture shop. And you would definitely risk an infringement suit if you tried to open any sort of Mc-fast food restaurant, even if your real name is McDonald. The McDonald's fast food chain, however, would not be able to stop a hardware store from using the name McDonald's Hardware.
 
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breakaway

Member
oh okay I see what you mean now. It's very interesting how the Mc in McDonalds actually holds more power than McDonalds.
What if you combined two words together (that had nothing to do with the product), such as MicroSoft. Would that be considered a unique trademark or just arbitrary?
 

quincy

Senior Member
Microsoft is unique as well. It is distinctive enough to set it apart from others. Micro and soft alone have something to do with Microsoft's industry (tiny software), but those words together make it an inherently distinctive trademark. As such, Microsoft can prevent anyone else from using it, even for a totally unrelated company. Kodak, eBay, Kinko's, and Nike, as we already discussed, are others. Made-up words or words that are unexpected in the context of usage (Time magazine) or words that cleverly describe the product or service can all be inherently distinctive.

The ones afforded least protection, at least until they become famous, are ones that use people's names (Sally's Soda Shop) or geographic terms (Michigan's Mitten Company, for instance) or that describe the product or service, like Quincy's Doughnuts, or Breakaway's Bicycles, if in fact I am selling doughnuts and you are selling bicycles. Now, if either of our businesses became famous, so that someone said Quincy's and people automatically knew they were talking about doughnuts, then my trademark would receive more protection.
 
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