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Comment by jacques_chester | Hacker News Reader

Trademarks are not global variables. They are scoped.

In trademark law these are called "classes".

If I have a trademark for McDonalds that covers navigation equipment, then the hamburger company can't sue me using their trademark which covers hamburgers. The coverage is scoped.

Now!

Observe the list of classes -- 37, 38, 41 and 42.

Apple is essentially registering "startup" to cover devices, their maintenance, development and training.

Not all uses of "startup" ever. Just those uses attached to what Apple produces.

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The owner of a mark with a sufficient reputation can take action against dissimilar goods and services where they're riding on the goodwill of the mark of course so TMs are not completely limited to their classes.

Rolex could sue me if used their marks on a good which they weren't registered in if I was trying to take unfair advantage of their mark, tractors for example.

Whilst it's highly unlikely in this case that Apple would, I think it's inappropriate to seek protection of the term in the first place, at least from a PR perspective and from the risk of trade mark creep.

Granted, but I don't think "startup" is a sufficiently distinct brand to be taken advantage of.

But thankyou for the correction.

I agree however looking forwards the brand could grow sufficiently large to gain this enhanced protection. I think even if this did happen Apple would be unlikely to enforce overly harshly but their stance on the App Store mark goes some way to show their approach to TM enforcement (though the discussion over the distinctiveness is another discussion!)

In Australia, McDonalds lost a case when they tried to stop McWilliams selling a "Big Mac" 2 litre bottle of wine, because no-one would mistake it for a hamburger. (http://www.internationallawoffice.com/newsletters/detail.asp...)

Thanks for that. Interesting! Looks like in Australia there has to be a likelihood of confusion even where a mark has reputation.

This is not the case in the EU, where the mere act of taking unfair advantage/causing detriment is sufficient for a TM owner to take action, even where there is no likelihood of confusion. Likewise, in the US, a TM owner would also have an action for TM dilution which does not require confusion.

That's still ludicrous. Apple is trying to control a word any technology company would use.

Within a narrow band of applicability. itafroma speculates that it's likely to be a retail package.

For example, suppose that Apple cuts out telcos and sells plans directly. What might those plans be called? It's easy to imagine the base plan being called "startup".

Or maybe it's a new technology or feature they plan to introduce. "Apple Startup, your gateway to the geohypersocialcloudappmotrons!". And so on.

If you're agin it, hire a trademark lawyer and lodge an objection. I've had good experiences with my lawyers: Golja, Haines and Friend in West Perth.

Is 'Friend' a surname or merely a miscellaneous third party?

It's a surname. Stephen Friend. I've worked with him on two trademark applications.

http://www.ghfip.com.au/ws/principal-attorneys/index.jsp

I originally engaged Thomas Haines to do help me with a patent. He's the only patent lawyer I could find in Perth who has a computer science background.

Facebook and "face". T-Mobile and magenta. I am sure there are more "interesting" examples.

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