Within the world of trucking, you’d be hard pressed to find someone who’s never heard of Prime, Inc. The Springfield, Missouri-based carrier is one of the largest trucking companies in the nation.
But to the general population, say the word “Prime,” and a different, even larger company is apt to come to mind, and since transporting goods is a big part of what this company does, the folks at Prime, Inc. are concerned about public misconceptions about whose trucks are whose.
They are so concerned, in fact, that on July 2, Prime, Inc. filed a lawsuit in U.S District Court, Western District of Missouri seeking to have Amazon’s trademark revoked on its Amazon Prime name and that Prime, Inc. is entitled to “the greater of three times Amazon’s profits or three times any damages” the carrier has sustained since Amazon began running its own trucks with the Amazon Prime logo in 2016.
Amazon was founded in 1994 and has grown to be the world’s largest retailer. In 2005, it began a premium service called Amazon Prime, providing customers with expedited delivery for an annual fee. In 2016, it was reported that Amazon had 54 million Prime subscribers in 17 countries.
Over the years, Amazon has used the “Prime” name for a number of optional services for Amazon Prime members: Prime Music streaming, Prime Reading e-books, Prime Pantry grocery delivery, Prime Video (later changed to Amazon Instant Video), and Prime Now, a service in some cities that provides deliveries within two hours of order. In 2013, it was announced the company was developing Prime Air, which is expected in the next few years to provide regular deliveries by drone for small orders within a few miles of an Amazon Fulfillment Center.
Prime, Inc. isn’t concerned with those services, per se. Their problem is with Amazon’s use of the word “prime” on its trucks, which the carrier says has the potential to cause confusion and do harm to its reputation and bottom line.
According to the lawsuit, Prime, Inc. first made an assertion of copyright infringement more than two year ago when it complained directly to Amazon. By continuing to use the logo, the lawsuit contends, Amazon’s actions are “intentional, willful and malicious.”
The lawsuit claims that even though the logos the two companies use are distinctive in appearance, the main element of both is the word “prime,” which is
enough to cause confusion. It is Prime, Inc.’s contention that this confusion is harmful for two reasons.
The first assertion is that Prime, Inc., which was founded in 1970, has been running its trucks with its logo since 1980, and had established a reputation from which Amazon has unfairly benefited. The suit also contends that Prime, Inc. is at risk of having its reputation damaged when dissatisfied Amazon customers erroneously confuse the two companies.
Prime, Inc.’s lawsuit argues that the carrier had established common law rights to the name. But in 2005, Amazon received a trademark for its “Prime” name. So, when Prime, Inc. sought a trademark on the “prime” name in 2011 and again in 2017, the U.S. Patent and Trademark Office rejected the application both times because of the close similarity to the already-registered Amazon Prime.
The lawsuit seeks to have Amazon’s trademark revoked, alleging that Amazon had falsely represented in its application that their service would provide “expedited shipping service for others” when in fact it did not even transport its own goods until nearly a decade later.