Most technology companies I know rightfully concentrate on developing their patent portfolio. Patents allow them to block competitors from duplicating their inventions. But competitors don’t have to infringe to unfairly take market share from you. As Visible Systems Corp. of Lexington realized, trademarks are the weapon of choice to fend off competitors who use similar product names to snag customers who have heard about your great product or service. But trademark infringement can be even tougher to prove than patent infringement!
Visible Systems makes multiple software tools, all branded as “Visible”, including the “Visible Enterprise Workbench”, a design and deployment tool for “rapid development and migration of information systems”. Visible noticed that Unisys was marketing and selling software and services that create a virtual map of an organization’s IT infrastructure under the name “3D Visible Enterprise“; not surprisingly, Visible felt this product infringed on its trademark and was costing it business.
Visible sued Unisys, won in a jury trial, and just last week had the judge uphold the verdict and direct Unisys to pay up and to stop using the product name. Note that Unisys can continue to sell its software and services - no one claimed there was a patent being infringed - but Visible, with less than 25 employees, no longer has to worry about Unisys (more than 31,000 employees) selling to customers who had heard good things about “Visible” software products.
Although Visible won this time, the verdict easily could have the other way. Why? Because a key consideration in trademark suits is the likelihood of confusion in the marketplace. It is legal and appropriate for two non-competing companies to have the same trademark - we all know Apple computer and Apple music co-existed for many years before Apple (computer) started selling music, the product of Apple (music).
In Visible’s case, there are a multitude of other companies with the word “visible” included in their trademarks or in their names. In fact, a simple Google search turns up a company in New Jersey with the identical name [Visible Systems Corp.] which owns the URL “visiblesystems.com”. So the question of confusion in the marketplace was not a slam dunk to decide.
Probably Visible could have forestalled the whole risk of having to sue Unisys had it selected its trademark more wisely. “Visible” is a real English word, for which it is almost impossible to claim exclusive use. Unisys may have felt “visible” was a descriptive enough word that they could get way with using it. There’s a reason we have Kodak, Xerox, and Kleenex out there. Have you looked at your trademarks recently?