iTexas iphone App Raises Trademark Infringement Questions
Recently, I read an article by Wells Dunbar in The Austin Chronicle about an iphone app called iTexas titled, Texas Trademark War: UT vs. iTexas . It was a discouraging and hard to believe story about the potential loss of a very useful application that allowed University of Texas students the ability to browse their iphone app and check out cafeteria menus, the balance in their school account, check the directory, find building (harder than you’d think at Texas), set class schedules, etc.
However, the University of Texas wasn’t so pleased with the name iTexas. The University claimed the name, iTexas, would cause confusion among the public on who the actual proprietor of the app was.
Throughout the years, Texas attained several trademarks relating to the University, one of which is the term Texas itself. Although hard to believe, UT owns the mark Texas, but is limited in its use of the term. When establishing a trademark one must
be sure to specify what goods or services they are to provide in conjunction with that name. For instance, there is “Daisy” sour cream and “Daisy” BB guns. Both marks are allowed by the United States and Trademark Office (USPTO), because the good differ so much that the general public would likely not be confused on who was selling the mark. However, in the iTexas case, UT registered the Texas trademark to include several different areas, such as t-shirts, notebooks, educational services, etc. Although UT seemingly hasn’t registered the Texas mark for the class that would encompass iphone apps, UT is claiming that there would be a likelihood of confusion by the app creator’s use of iTexas.
In order for the courts to determine whether there is a likelihood of confusion in the iTexas case they would likely look to what are called the DuPont factors. The DuPont factors consist of 13 factors the court weighs to determine whether there is a likelihood of confusion between the registered and allegedly infringing mark. After the court weighs evidence as it pertains to these factors, they will make a determination on the likelihood of confusion. As was mentioned in the article, the cost changing the name after the development of a product is not only frustrating, but can cause serious problems … if not actually become the proverbial straw that broke the camel’s back.
So what are some common things people do to avoid this fate?
- Begin using the mark. This option has some advantages, but if you are planning on spending a significant amount on marketing you want to make sure you don’t have to go back and do it again.
- Do a basic search on the uspto.gov website. A good first step, but be careful not to feel too overly confident about these initial results – the mark doesn’t have to be exactly the same to infringe.
- Perform a search using professional search companies. The analysis of the search results should ultimately be performed by your trademark attorney, but this is an effective method to see what potential obstacles you are facing.
- Some people believe that reserving a d/b/a or filing with their State’s secretary of state’s office will provide some trademark protection. Contrary to popular belief, this last option does not provide any trademark protection. A d/b/a can provide certain protections, however, protection against an infringer is not it’s purpose.
- Consult an attorney. Often these major infringement issues can be spotted immediately and can be discussed in a free initial consultation. While others issues may take some research and analysis to uncover, in the long run it is worth it.
When growing a company, I understand that dealing with trademark issues can take up too much of your time and money, but some due diligence is this area is a must. These trademark issues become more and more expensive the longer you go without taking some precautions.
