How I managed to protect my brand from Shopify — Part 2

In the ever-evolving world of e-commerce and retail, the word “SHOP” is a common thread that binds countless brands. Walk down your local street, and you’re likely to encounter shops of all kinds, from Food Shops to everything in between. This ubiquity of the word “Shop” sets the stage for a unique trademark battle between two seemingly similar yet distinct brands: Shopify and Shoppi.

The European Conundrum: Our story takes us to Europe, where a legal dispute unfolded, ultimately making its way to the European Court of Justice in 2021. This landmark case raised important questions about the trademarks that incorporate seemingly weak or descriptive words and their ability to coexist and thrive in the market.

The European Court of Justice conducted a thought-provoking comparison, shedding light on a simple yet profound rule: even if consumers tend to focus on the first part of a word, a descriptive word in the trademark can transform the overall meaning. In October 2022, a momentous decision was reached (appeal number T-222/21): Shopify lost its battle, as the court declared that the likelihood of confusion was unfounded.

The U.S. Perspective: Meanwhile, across the Atlantic, a different interpretation was at play. The United States Patent and Trademark Office decided that Shopify and Shoppi must be assessed as whole entities, leading to a different outcome — a likelihood of confusion. This contrast is particularly intriguing in a country where the word “Shop” is considered commonplace and widely used.

The Costly Conundrum: This tale raises a pertinent question: Should a company invest over $100,000 in a legal battle where victory might be within reach, but the opponent’s financial capacity looms large? Is this a case where rights are granted based solely on financial clout?

A Case in Point: Consider the case of In re SDI Petroleum, LLC, which offers a glimpse into the world of trademark refusals based on the likelihood of confusion. In this instance, the applicant sought registration of the mark “DASH NEIGHBORHOOD” for retail store services featuring gasoline.

The Examining Attorney’s refusal was rooted in prior registrations for the marks “DASH IN” and “D DASH & Design,” both owned by the same registrant. The applicant’s quest for reconsideration was denied, prompting an appeal.

A likelihood of confusion analysis weighed various factors, including identical services, visual and auditory similarities, and commercial impressions. The shared services and overlapping consumer bases tilted the scales toward finding a likelihood of confusion.

The applicant’s argument that the term “dash” was weak due to its common use in convenience stores carried weight, supported by examples of similar marks from around the country. The Board concurred with the applicant, citing relevant cases such as Jack Wolfskin Ausrustung Fur Draussen GmbH & KGAA v. New Millennium Sports SLU and Juice Generation Inc. v. GS Enters LLC.

Conclusion: In light of the European ruling, it becomes evident that the term “Shop” cannot be the sole basis for comparison. Instead, the unique elements “pi” and “ify” come to the forefront, each contributing distinct sounds and meanings. Interestingly, in English-speaking countries like the UK, both companies continue to coexist without complaints.

It’s essential to note that the ECJ proceedings encompassed UK evidence, playing a pivotal role in assessing the likelihood of confusion. This period coincided with the Brexit transition, shedding light on the intricate rules governing rights transfer and coexistence between the UK, Northern Ireland, and EU.

The Shopify vs. Shoppi trademark battle exemplifies the intricate dance of law, language, and commerce in the modern world. As this story unfolds, it offers valuable insights into the delicate balance between brand protection and market competition, reminding us that even the most common words can carry significant legal weight.