Once you’ve trademarked the name of your business, no other entity can use that name in commerce. Everybody knows that. Right?
Wrong, actually. One of the more common misconceptions we encounter in our trademark law practice is the belief that no two businesses can employ the same word as the principal element of a registered trademarked name. A trademark does not necessarily provide its holder with complete commercial exclusivity to a particular word or name, as is demonstrated by a current situation involving Internet giant Google.
Google recently announced that it would reorganize itself into a collection of companies operating as subsidiaries of one massive holding company, to be named “Alphabet.” Unsurprisingly, and as the media soon reported, the name Alphabet already was in use by another noteworthy company: BMW, the German luxury automobile manufacturer. The implication in some of the media reports was that Google had made some sort of misstep or that BMW’s previous use of the Alphabet name would present an obstacle for Google’s move. The situation, however, is more nuanced than that simple reading.
Without digging too deeply into the intricacies of U.S. trademark law – which many people are surprised to find is often complex – the main points to keep in mind are these:
First, BMW (or anyone else using “Alphabet” in its trademark) would need to claim that Google’s new holding company was infringing upon its own trademark. There is no indication that BMW plans to make any such claim, but for the sake of this exercise, let’s assume they do. Because BMW does not appear to be using “Alphabet” as a trademark in the U.S. and has not applied to register “Alphabet” as a trademark in the U.S., the car maker would find it difficult to assert to that Google’s use or registration of “Alphabet” in the U.S. infringes upon BMW’s mark, which is used and registered outside the U.S.
Second, even if BMW had used and registered “Alphabet” as a trademark in the U.S., convincing the Trademark Office or a district court that Google’s use or registration infringed upon BMW’s mark would require it to demonstrate that Google’s use of “Alphabet” was likely to cause consumers to mistake the two trademarks for each other, creating confusion in the marketplace. Because BMW’s “Alphabet” is a vehicle fleet management service and Google’s “Alphabet” is a holding company that (so far, at least) does not directly sell any goods or services of its own, the risk of confusion in the marketplace seemingly is likely to be negligible.
We are fairly sure that a company that keeps as many ducks in a row as Google does was fully aware of BMW’s Alphabet but realized that the two names could happily coexist. If the new Alphabet company begins using its brand to sell some of those self-driving cars being developed by Google, BMW may have reason to get its trademark attorney on the telephone.
Until then, they can mind their Ps and Qs.