Hacker News Reader

Comment by drcube | Hacker News Reader

No, you have to defend trademarks, or else eventually lose them.

Was "It's the real thing" trademarked? And furthermore, trademarks are only usually enforced among competitors. Apple Computer can't sue Apple Dry Cleaning for trademark infringement. Well they can, and occasionally do, but it isn't a given that they will win. Usually you have to show damages, and Apple Computer isn't damaged in any way by having a dry cleaner use the name of a popular fruit. Similarly, I don't think Coca-Cola lost anything by having the phrase "it's the real thing" associated with a literary work.

My question for the lawyers: Does a letter like this count as "defending a trademark"? Or would Coca-Cola have had to actually take these publishers to court over it?

View on HN

uspto.gov trademark search shows:

   Word Mark	IT'S THE REAL THING
   Owner	(REGISTRANT) The Coca-Cola Company CORPORATION DELAWARE ONE COCA COLA PLAZA Atlanta GEORGIA 30313
   Registration Date	December 7, 2004

   Goods and Services	IC 032. US 045 046 048. G & S: Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. 
   FIRST USE: 19421231. FIRST USE IN COMMERCE: 19421231

The registration/renewal date is no use, but the first use date shows 12/31/1942. Just as Coca-Cola asserts in their letter.

Right, clearly they do have the trademark on the phrase. But the mark is limited in scope to things related to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]". So they have no right to enforce it in reference to a book or book advertisement, as they tried to do here.

To be clear, they registered its use for "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]", but they can still claim someone is violating a non-registered trademark.

That should be disallowed -- a company owning english phrases like "it's the real thing" or "just do it".

If it was up to me, I would allow only for trademarks in synthetic, non-english words. E.g "Soylent" or "Pepsi" or "McBurger". Not for actual english words ("Windows") or phrases.

In addition to the other comments, regarding limited scope, note that trademarks have dual purpose:

One one hand it protects the interest of the registering company, by preventing competitors from benefiting from their marketing.

On the other hand, it protects the public by protecting the public against confusion about the origin of a product or service.

E.g. if Dirt-T-Water Inc. starts selling poor quality unfiltered tap water and market it with "it's the real thing", it'd benefit from Coca Cola's marketing and harm Coca Cola's brand, but the reason for that is that it would capitalize on peoples trust and expectations of the Coca Cola brand by confusing some portion of them into associating the two.

Whether or not the public would be confused is also a key test in most jurisdictions as to whether or not a trademark has been violated.

So unlike many other form of protection for corporate assets, trademark protections - when not overreaching - often very directly aligns with public interests.

>So unlike many other form of protection for corporate assets, trademark protections - when not overreaching - often very directly aligns with public interests.

I'd actually say that the public is as likely to be misinformed by the owning company's marketing as it would be from the copycat company's in this case. It's not like saying "it's the real thing" makes coca-cola "the real thing", or saying "100% agnus beef" makes whatever BS the sell at McDonalds good to eat.

Sure, there might be some confusion if Dirt-T-Water starts marketing it's stuff with "it's the real thing". But that would be minimal anyway, because the two products would have different logos (by law) and different names (by law).

At best they would benifit subliminally from those buyers that buy their stuff because the slogan reminds them of something.

As others have said, it's within limited scope.

cf: "Lies: and Lying Liars Who Tell Them (A Fair and Balanced look at the right)" http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/04522852... - was sued by Fox News because they own "Fair and Balanced." The suit was thrown out, because it's selling a book, not the news.

Read more carefully. CC owns the use of that phrase ONLY in terms of describing non-alcoholic beverages and beverage mixes.

I suppose a court might find that using it to describe, say, bourbon, would be an infringing use, even though CC does not claim alcoholic beverages. More so if the packaging or flavor was intended to mimic a cola.

But you could market your new line of toilet paper or watches or hippo-hide whips as The Real Thing, and Coke would have no more of a leg to stand on than they did with the book publisher.

It's also appropriate to note that the company claiming the trademark must actually use it reasonably often -- you can't claim "Softer than a cloud" for your waterbeds and then not use it for some number of years. That one will be trickier, though.

I believe that is why a classification also needs to be attached to the application (e.g. "Non-alcoholic beverages, namely, soft drinks").

While Coke may be asserting they own the trademark for "It's the Real Thing", they're being a little oblique with the fact that they only have it for soft drinks and not printed publications. So it seems Coke is trying to bully the publisher when the publisher seems to know that they are in a different classification. They are pretty much saying this in a sarcastic way in their reply.

Trademarks are limited in scope. Note how in the parent comment the phrase is trademarked in relation to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. "

You should be able to use the phrase outside that context. Of course you might have fun time in court defending that right.

It's a hard call. The problem is that while in some cases it seems completely ridiculous, in others it really could lead to customer confusion, and that's bad for both the original company and the consumer.

"Just do it", for example, is extremely recognizable as Nike, whose brand is associated (deservedly or not) with high quality. If you put "Just do it" on a shoe ad, people will assume (reasonably) that it's made by Nike. Without trademark protection, it would be easy for another business to exploit Nike's reputation to pass off shoddy goods.

Maybe a way to avoid being exploited like that would be to avoid using such a common expression which is actually the origin of the problem.

UPS has a trademark for a shade of the color brown. Your blood may or may not be boiling about this.

If it was up to me, I wouldn't allow any trademarks.

Then how would you prevent people from tricking customers with confusingly similar names and packaging?

Contract law.

I can't see how contract law protects me from buying a brand other than Coke. If that isn't punchy enough, imagine a company selling a homeopathic medicine and advertising it with similar phrases and names to Asprin. If I'm taking Asprin to prevent heart attacks and I'm confused and pick up the homeopathic stuff, I could be harmed. Contract law is no protection here.

> I can't see how contract law protects me from buying a brand other than Coke.

It wouldn't literally prevent all cases. It would allow for damages to be awarded to victims, paid for by the perpetrators, which would deincentivize manufacturers from attempting to deceive customers. Contract law provides precisely the same protection here as trademark law, except it's better, because damages can be awarded to the people who were actually deceived and potentially harmed. Also, the great side effect is you don't have all the ludicrous results of trademark law, like ownership of letters, words, phrases, shapes, and colors.

So the end result would be the same, no? I buy the wrong brand due to the bottle being the same shape and I get damages. But that's still contingent on Coke "owning" that bottle shape. Whether it happens before the purchase or after it, Coke still owns that shape.

I'd frankly like to avoid the headache of pursuing damages and just have that dealt with between the companies who want to go to the trouble of trademarking something so I can just buy what I want.

> Also, the great side effect is you don't have all the ludicrous results of trademark law, like ownership of letters, words, phrases, shapes, and colors.

Except if you don't have that, or its equivalent, the system can't work.

Whether the mechanism is based on contracts or ownership, the end result is that the only kind of soda which can have that bottle shape and that kind of logo design is the one made by this specific company. Otherwise, it's too confusing, and fraudulent misrepresentation is too easy.

Specific colors, words, shapes, and patterns are how human brains distinguish things. They have to be distinct and recognizable for people to differentiate between different kinds of product, especially when they're different varieties of the same basic thing.

It seems you're getting hung up on specific terms, such as 'own'. That's not how the law works: Broad concepts are whittled down into specific terms of art in each individual branch of the law, which is what has happened to the concept of 'ownership' when applied to trademarks. It's a very different thing from owning a car, but there are certain vague similarities that justify the re-use of the concept.

Using Apple Computer as an example is funny because it's similar to what happened when Apple Corps sued Apple Computer for trademark infringement (http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer). I don't understand how a computer company would harm the holding company for the biggest band to ever exist, but this fight went on for over two decades.

Until this fight was resolved, The Beatles were not on iTunes. Steve Jobs was a huge fan of The Beatles.

Reply on news.ycombinator.com