When small businesses are just getting off the ground, one big question on their minds is, “How do we stand out from the competition?” One way to stand out is by having a distinctive name, slogan, or logo. It’s even better if a business takes steps to ensure these identifying symbols are maximally protected under the trademark law.
A valid trademark identifies the source of a good or service in interstate commerce. While businesses can register their trademarks with the US Patent and Trademark Office, registration is not required for validity. However, registering a trademark creates a legal presumption of ownership and validity. This can help enforce rights to use the mark in a specific market.
While securing trademark protection is essential for small businesses to distinguish themselves, the reality is that there are many obstacles in their way, including larger corporations. Big businesses often use their considerable resources to enforce their trademarks aggressively, sometimes even intimidating small businesses to not use a specific mark due to fear of costly litigation. The USPTO refers to this as trademark bullying.
Trademark Bullies
One prominent example of this bullying is Apple. Apple frequently threatens trademark litigation against other businesses. While Apple has a registered trademark for its fruit-shaped logo, it uses its large arsenal of legal knowledge, funding, and staff to take advantage of small businesses. Apple has filed more than 215 trademark oppositions over 3 years. This has included trademark oppositions against a small stationary business, a school district, and a nonprofit working with autistic children, that use apple-shaped logos that don’t even look remotely similar to the tech giant’s logo. Consumers are unlikely to associate these logos with Apple, as they feature distinct designs and contexts that differentiate them from the iconic tech brand. Small businesses like these end up changing their names or logos out of fear of litigation or trademark opposition claims from big businesses.
Thomson Reuters estimates that trademark infringement lawsuits that advance to trial could cost anywhere between $375,000 to $2,000,000 per case. These costs likely deter small businesses from litigating trademark disputes against big companies.
The Case of Gemini Data and Google
To further illustrate the impact of these trademark issues, consider the recently filed case between Gemini Data and Google. Gemini Data, a small Artificial Intelligence (AI) firm based in San Francisco, filed to register the name “Gemini” as a trademark for software products using AI. The United States Patent and Trademark Office (USPTO) granted Gemini Data the registration in 2021. This registration should have provided Gemini Data with the security of presumed validity over that name in the software space which should protect them against other companies. Yet, in 2023, Google introduced their recently re-named AI model named Gemini (from Bard).
In fall 2023, Google filed a trademark registration for the name Gemini for downloadable software that uses AI. The USPTO rejected Google’s application. The USPTO specifically rejected it because it would likely get confused with Gemini Data’s approved marks. Yet, Google went ahead and continued to use the name Gemini for their AI platform anyway. On September 11th, 2024, Gemini Data filed a trademark infringement lawsuit against Google for using its registered trademark “Gemini.” While Google has not yet forced Gemini Data to change its name or “bullied” them into dropping the lawsuit, it raises concerns about who should get to use the trademark – the rightful trademark owner or the big business with brand recognition.
What Options Are Available for Small Businesses, like Gemini, to Seek Legal Action Over Someone Using Their Trademark?
When a business believes another company or individual is wrongfully using their trademark, there are three main legal actions it can take, but only one is very applicable for small businesses:
First, businesses can file a trademark infringement suit against the possible wrongdoer. Trademark infringement lawsuits are likely the only realistic option for small businesses. In a trademark infringement lawsuit, the company or individual must prove that the two marks used in commerce will lead to confusion by consumers. A court will consider various factors in a trademark infringement lawsuit, like the similarity of the marks, the alleged infringer’s intent to capitalize on the plaintiff’s goodwill with its brand, and the market strength and the trademark strength of the plaintiff’s trademark.
What Options are Available for Big Businesses to Seek Legal Action Over Someone Using Their Trademark?
While small businesses have limited recourse, and likely can only file trademark infringement claims, some larger companies can take advantage of additional legal protections, including trademark dilution and filing a trademark opposition claim directly through the USPTO.
The second legal recourse option for wrongful trademark use, federal trademark dilution, is only accessible to famous trademarks, such as the Starbucks logo or the name Coca-Cola. Trademark dilution can occur when an individual or company uses a mark similar to that of the nationally famous mark as their own to sell goods or services. Famous examples of successful trademark dilution claims have involved large companies like Louis Vuitton and Jack Daniel’s Whiskey. These cases differ from infringement claims because in a trademark dilution case the plaintiff only needs to demonstrate a likelihood of dilution, rather than a likelihood of confusion. The owner of the famous mark needs to just show that the other user is likely tarnishing the reputation of their trademark or that consumers will likely start associating the other user’s mark with their famous mark (this is commonly known as blurring).
Since marks must be nationally famous in dilution claims, a small business’ trademark is unlikely to qualify due to its size and scope. So, federal dilution is not an applicable legal option for Gemini Data because they do not have a famous mark. Although California, the home state of Gemini Data, has its own trademark dilution law, the mark must still be considered famous to qualify for protection. However, dilution would be an option if someone was improperly using a trademark that was possibly diluting a massive organization like Google.
The third potential option for recourse is known as trademark opposition. Once a trademark application is published on the official gazette, the publication that lists registered trademarks and published applications, third parties have 30 days to oppose the application. This often happens when a party believes their business could be harmed by a potential registration. While anyone can file an opposition, including small businesses, large businesses will typically have an easier time doing it. They often have IP counsel who have the bandwidth to track trademark filings and can quickly respond within the 30-day requirement. In contrast, small businesses may struggle because they have fewer resources, fewer staff, and limited time to file an opposition. This puts them at a disadvantage in protecting their trademarks,
Businesses that miss this opportunity can still file a cancellation within five years of registration. However, that would not prevent the other companies from starting to use their mark, and still would be difficult due to low funding and low staff.
Small businesses with trademark concerns can realistically pursue only one of these legal options. In contrast, large businesses with nationally-known trademarks can argue they are protected against both potential dilution and confusion-related infringement in court.
Unfortunately, Gemini Data will likely face difficulties in this trademark infringement action. As a small business, Gemini Data likely has fewer resources and staff compared to the potential infringer, Google. The New York Times highlights that as of 2019, Google had 102,000 full-time employees, and even more temporary workers and contractors. In contrast, Forbes indicates that 8 out of 10 small businesses in the United States are solo ventures. This highlights the unlikeliness that a small business is well-equipped with trademark counsel, while a large corporation likely has many. As a result, these small businesses tend to have less success in trademark actions compared to large corporations.
This disparity suggests that trademark protections may be more effective and relevant for big businesses. In this example, Google will likely be able to continue using “Gemini” as a mark even though Gemini Data has a registered trademark due to greater resources and staff. Google may even become a “trademark bully,” like Apple, and use intimidation tactics to convince Gemini Data to drop the lawsuit out of fear of high costs.
So, What Should Be Done?
To make the law more beneficial for small businesses, the USPTO should offer affordable legal options for trademark recourse and increase access to free trademark education resources.
The USPTO should create a small trademark claims court similar to the Copyright Claims Board for copyright infringement claims. This would provide a less expensive option for legal recourse, allowing small businesses to have more options to defend their trademark rights in court without the large price tag.
Additionally, the USPTO should provide more resources to help small businesses understand their rights and how to protect their trademarks. Currently, the USPTO has a resource page for small and medium-sized businesses. Still, these resources do not mention how to navigate a trademark dispute or defend a trademark in a lawsuit. The USPTO should create specific, informative resources for small business owners to understand their trademark rights and defend their trademarks effectively. This should include guides on recognizing infringement, steps for filing complaints, and strategies for effective negotiation. By equipping small business owners with this knowledge, the USPTO can help level the playing field and empower small businesses to protect their trademarks more confidently, regardless of their number of staff or funding.
Do you think trademark law needs to change to help protect small businesses? Should there be more resources or opportunities for legal recourse for small businesses?
Griffin Topel
Associate Blogger
Loyola University Chicago School of Law, JD 2026