Maybe you've heard of a new AT&T LTE handset from HTC called the Vivid. Maybe you haven't. Either way, HTC has gotten itself in a bit of hot water using such a risqué name on the blazing fast beast. By whom, you ask? Why, adult entertainment company Vivid Entertainment, of course.

Vivid is threatening HTC with a possible trademark infringement suit if the name of the device isn't changed. When asked about the suit, HTC had this to say:

We are reviewing the complaint and don't expect to have any further comment until it is resolved.

Yeah... typical public relations crap. Of course, Vivid does have a point - for the porn obsessed, this naming could lead to a rather disappointing outcome when they find out the device isn't porn optimized.

In retrospect, if HTC would've stuck with the same name as the Korean version of the device, it would probably be dealing with a similar situation from the city of Oakland.

You probably should've just stuck with Holiday, HTC. On second thought, a certain hotel chain may have objected to that. I guess there's just no winning this one.

Legal explanation from David: For anyone who knows anything about trademark law, this is a pretty obvious case of what looks like facial infringement, but when examined under the Sleekcraft 'likelihood of confusion' factors, doesn't stand up to any sort of scrutiny.
  1. Strength of the mark: Vivid's porn trademark may be recognized by hundreds of thousands (possibly more - if they can get people to admit to it), but it's not something you're ever going to see in much mainstream advertising.
  2. Proximity of the goods: Unless Vivid can concretely demonstrate they plan on making smartphones or porn-optimizing smartphones some time soon, there's obviously no relation between the market for the HTC Vivid smartphone and Vivid, Inc.'s porn movies. A smartphone app or mobile-optimized site will not constitute proximity of goods.
  3. Similarity of the marks: Given that they use the exact same word, there's clear similarity, though HTC's smartphone obviously has the very well-recognized HTC mark attached to it, providing some level of facial distinction.
  4. Evidence of actual confusion: This is where Vivid will completely fail. Unless they can provide actual evidence of confusion (surveys), there's no way they'll show a likelihood of confusion - I can guarantee you they won't.
  5. Marketing channels used: Unless Vivid starts advertising porn on (non-late night) television, mainstream websites, or magazines (or HTC starts advertising phones in porn), the two products exist in very different marketing channels.
  6. Type of goods and the degree of care likely to be exercised by the purchaser: No one is going to buy a $500+ smartphone on the sole belief that it is somehow related to an adult film company. People exercise considerable care when purchasing such an item.
  7. Defendant's intent in selecting the mark: It's unlikely Vivid can prove HTC had any intent to confuse consumers by "hijacking" Vivid's mark for a phone. If anything, this might decrease sales of the product in certain markets.
  8. Likelihood of expansion of the product lines: Vivid will probably not be making smartphones any time in the future. HTC will likely not be making porn.

There's not a case here - Vivid is just trying to get attention from the media, it's a publicity stunt. If Vivid honestly thinks they have a case, someone should probably fire their chief legal counsel.

[The Verge]

Cameron Summerson
Cameron is a self-made geek, Android enthusiast, horror movie fanatic, musician, and cyclist. When he's not pounding keys here at AP, you can find him spending time with his wife and kids, plucking away on the 6-string, spinning on the streets, or watching The Texas Chainsaw Massacre on repeat.

  • http://twitter.com/MKChris MKChris

    Am I missing something? Surely it's not possible to put a trademark on what is essentially a word in the English language?!

    • Telanis

      Heard of Apple?

      • Mike

        LOL..Nope..who the heck are they? They sell apples? because if they sell apples (the produce) that would be a generic term incapable of a trademark..lol

    • Mike

      Uhmm yes it is...it depends how it relates to the goods/serivces/ etc being sold..

      If it is a generic term for your product...you can never TM it.

      If it is deemed desriptive, it can be TM after awhile if it acquires secondary meaning..

      If it is suggestive or fanciful/arbitrary..then you can TM it..

      Obviously the key to acquiring a trademark for your product is using at least a suggestive word/term etc and most battles in acquiring a TM lie within proving it isn't desrciptive but suggestive.

  • Chahk

    At the rate manufacturers are cranking out the handsets, pretty soon they will run out of words in the English language to name them. We'll be looking at HTC Asdfg and Motorola Zxcvb soon.

    • Cameron Summerson

      Actually, I think Moto already used that one.

  • Jaz

    This is crazy. I really hope a judge throws out this ridiculous suit. Vivid is just a word. This is unbelievable.

  • Scott

    That's not how trademark law works. You can trademark "Vivid" as a porn provider, but it doesn't prevent me from naming a phone "Vivid". Trademarks are domain-specific.

    • Alex

      Bingo. This is just a headline grabbing stunt to make people actually aware that this company actually exists. There's no actual genuine claim here at all.

      Of course, it's a -stupid- stunt as no-one pays for porn these days anyway, so they're inevitably going to lose out more in legal fees than make back up in the response they get through the press.

    • Mike

      That is part of it...one of the factors in determining infringement is the likelihood of "bridging the gap".

      There is an argument to be had that an adult entertainment business could conceivably develop a porn specific smartphone to market their "goods"...think Naked Netflix or soemting..lol

      • Tarukai

        *Nutflix would be a good name for that netflix-style company.

    • David Ruddock

      Correct, under the Sleekcraft "likelihood of confusion" factors, there's no way this case would ever get off the ground. The products are simply far too distinct.

  • Andy in Indy

    "Of course, Vivid does have a point - for the porn obsessed, this naming could lead to a rather disappointing outcome when they find out the device isn't porn optimized."

    Wait, I thought that it was. After all, The Android Phone is for Porn :-)

  • Geeky

    They could just change it to the Caballero. Oh...wait...nevermind...

  • Fisher

    Lol this is like apples lawsuit against getjar for using term app store about 10 years before apple even considered making phones

  • Asphyx

    First off they can't trademark a word only a logo!
    You can copywright a word but only in conjunction with other words!

    HTC is not calling their company VIVID so there is no way there can be confusion with the company!

    Apple tried to trademark Apple but you don't see signs in the supermarket that now say Sweet Red Balls of fruit!

    This is never going to affect the HTC product at all!
    More likely this is just an entry way for Vivid to get into talks with HTC so they can start on their Mobile porn busines which I expect that conversation to last all of 5 minutes!

    • David Ruddock

      Wrong. You can definitely trademark a word. The graphic logo is part of the trade name mark, of course, but the word itself can definitely be trademarked in a specific industry.

      No other company can make a computer or phone called an "Apple" - Apple owns the rights to that word in the computer and smartphone business, so long as they continue to protect it.

      However, Apple Corps (the Beatles' label) CAN use the Apple name because they're a music publisher, not a computer manufacturer.