Legal disputes over similar names are not uncommon, especially in industries where trademarks are important for protecting a company's brand and reputation. When two companies have similar names or logos, it can lead to consumer confusion and dilute the value of both brands. As a result, companies may take legal action to protect their trademarks and prevent other companies from using similar names or logos.
Details of the case
In April 2021, Stitch Editing Ltd. filed a complaint in the Southern District of California alleging that defendants TikTok Inc. and its parent company BytDance Ltd. infringed its trademark by calling a video editing feature “Stitch.” According to the complaint, Stitch Editing provides editing services for commercials and music videos and owns a registered US trademark for ‘Stitch Editing’ and common law trademark rights for “Stitch” that cover its editing services.
Stitch Editing Ltd. is a film and video editing company based in London, UK. The company was founded in 2010 by editors Tim Hardy and Leo Scott, and it has since worked on a wide range of film, television, and commercial projects. Some of the notable projects that Stitch Editing Ltd. has worked on include the films "Promising Young Woman" and "The Trial of the Chicago 7," as well as the TV series "Black Mirror" and "Peaky Blinders." Stitch Editing Ltd. has received critical acclaim for its work, and its editors have been nominated for and won numerous awards, including BAFTAs, Emmys, and Oscars.
TikTok Inc. was founded in 2012 by Zhang Yiming and is headquartered in Beijing, China. The app was launched in China in 2016 under the name Douyin, and it quickly became popular in the country. In 2017, the app was launched internationally under the name TikTok, and it has since grown to become one of the most popular social media platforms in the world. TikTok Inc. is now a subsidiary of the Chinese tech company ByteDance, which acquired the app's parent company, Musical.ly, in 2017 and merged it with Douyin to create the global TikTok platform. TikTok has over 1 billion active users worldwide. The app has been downloaded over 2.5 billion times on the App Store and Google Play.
TikTok introduced the Stitch feature in September 2020, as part of a series of updates to the app. The TikTok Stitch feature is a tool that allows users to take a video from another user's account and use it as a starting point for their own video. With Stitch, users can clip and edit up to five seconds of another user's video and incorporate it into their own video.
According to the complaint, TikTok refused to cease its infringement despite receiving first notice to cease and desist on December 28, 2020, and a second notice to cease and desist on January 27, 2021. The video-editing company argues that TikTok’s use of themark is likely to confuse, mislead, or deceive consumers into believing that TikTok’s STITCH editing feature originates from, or is associated with, sponsored by, or affiliated with Stitch, when it is not. Tiktok argued that Stitch Editing's trademark in its name does not give it a global monopoly on the use of the word Stitch to refer to the process of combining video clips.
After a seven-day trial, in March 2023, the California jury found TikTok not liable for infringing the registered “STITCH EDITING” mark. It also found that Stitch Editing did not have common law rights in the “STITCH” trademark to enforce. As such, the jury rejected Stitch Editing's argument that TikTok confuses consumers by using the Stitch name to brand the platform's technology for stitching videos together.
In order to be eligible for trademark protection, a word or phrase must be distinctive and not merely descriptive. This means that it must be unique enough to identify a particular source of goods or services, and not simply describe a feature or characteristic of the product or service. This is because such words are considered to be "descriptive" and are not distinctive enough to identify a particular source of goods or services. Trademark law also prohibits the use of marks that are likely to cause confusion with existing trademarks, regardless of whether they describe features or characteristics of a product or service. However, proving that there is a significant likelihood of confusion requires a high degree of similarity and strong evidence that an average consumer would be likely misled by the continuous use of the trademark.