Zooming Toward a Cliff

If there’s one trademark that’s become a household word in the past few months, it’s ZOOM. Surely Zoom Video Communications, Inc. is 100% sure it has the right to use ZOOM and it secured that right by registering it with the U.S. Trademark Office.

You know where this is going, right?

Zoom filed its first trademark application with the U.S. Trademark Office in August 2017, claiming it started using ZOOM as a mark for video conferencing services in May 2012.

As of this writing (May 2020), that application is still being held up because of two applications that were filed in September 2012 and November 2013, after Zoom’s first use but before Zoom filed its application.

If Zoom had filed its application when it started using the ZOOM mark, it would have been ahead of those two applications in priority. Instead the 2017 application is still up in the air as are:

• Zoom’s application filed in May 2018;
• Zoom’s application filed in July 2018;
• Zoom’s application filed in May 2020; and
• Zoom’s other application filed in May 2020.

Is Zoom going to have to rebrand? Probably not. The brand is too valuable now to walk away from it so Zoom will continue fighting with the Trademark Office and might end up paying some other companies for their rights.

There are lots of risks when starting a business. Some, like this one, are easily avoided.

Shout out to Alyssa for bringing this topic to my attention.

Tradename ≠ Trademark

Recently one of my clients received a cease and desist letter demanding that my client stop using its trademark. The lawyer included a certificate from the state of Ohio evidencing her client’s registration of a tradename.

My response: No one cares about your tradename registration. Do you have any trademark rights?

I also recently had a client tell me he knew he was safe using a certain trademark because he just formed a corporation using that word.

My response: No one cares that Delaware allowed you to form a corporation using that tradename. I’m worried that someone else has the trademark rights.

A tradename is NOT the same thing as a trademark.

• A tradename is the legal name or assumed name of your business. The name of my business is Berdinis Law P.C.
• A trademark is how consumers identify a source of goods or services. My trademark is BEELINE®.

A partridge isn’t porridge. A candle isn’t a cradle.

It’s possible for the some of the words a company uses for its tradename to also be used as its trademark. For example Starbucks Corporation uses STARBUCKS as its trademark for coffee. The numbers of my street address might also appear in my telephone number but that doesn’t mean my house and my phone are the same thing.

Okay? Are we all clear on that now?

Thanks for listening. I feel better.