The Difference ONE Trademarked a Word can make – in one case, one word costs $62 Million.

In defending against a trademark infringement case brought by PODS Enterprises, Inc.—known for making moving containers that are dropped off at one location, filled and then transferred to a storage center or other location—U-Haul attempted to claim that “pods” had become a generic term for moving containers.  After deliberations of more than three and a half days, the jury disagreed and awarded PODS $62,000,000!

“PODS” is an acronym for “Portable On Demand Storage.”  U-Haul used the term“pod” to describe its “U-Box” product on its website.  After a trial lasting more than two weeks in the Middle District of Florida, the jury found that not only did U-Haul’s use of “pods” cause a likelihood of confusion with PODS’ trademark, but it also found that the PODS mark was famous and had been diluted by U-Haul’s activities. Perhaps swayed by the allegation that U-Haul only began using the term “pods” after it had expressed an interest in acquiring the PODS company, the jury awarded PODS $45 million in actual damages and determined that $15.7 million of U-Haul’s profits were attributable to its use of the term “pods.”  Though the verdict is a big one, it is considerably less than the $170 million in damages PODS sought.

PODS has a registration on the term “pod,” and it was able to enforce its intellectual property rights against U-Haul for misappropriating the term. Perhaps more importantly, ownership rights to the word when used in certain contexts also allowed PODS to take a step against the trademarked term becoming generic, like aspirin or cellophane.

Any business that holds a registration trademark needs to remember that policing the use of your mark and enforcing it is required by trademark law to maintain the rights to the trademark.

PODS Enterprises Inc. v. U-Haul International Inc., case number 8:12-cv-014779 in the U.S. District Court for the Middle District of Florida.

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