{"id":3056,"date":"2023-10-26T11:46:02","date_gmt":"2023-10-26T16:46:02","guid":{"rendered":"https:\/\/blogs.luc.edu\/ipbytes\/?p=3056"},"modified":"2024-07-13T06:03:17","modified_gmt":"2024-07-13T06:03:17","slug":"the-name-game","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/the-name-game\/","title":{"rendered":"The Name Game"},"content":{"rendered":"

So you have a great idea for a new business and have thought of the perfect name.\u00a0 But what if it turns out there\u2019s a company who has already been using the same (or a similar) name to the one you\u2019re planning on?\u00a0 Or perhaps you\u2019ve registered a domain name that happens to be similar to another\u2019s?<\/p>\n

The good news is this isn\u2019t necessarily a cause to change the name you loved. \u00a0The bad news is there are a couple of claims that could be made against you depending on your circumstances.<\/p>\n

<\/p>\n

For someone to make a claim against you, first your name needs to be a trademark.\u00a0 A trademark is a word, symbol or device used in commerce on goods (or services) that identifies and distinguishes your goods and services from others.\u00a0 Merely using the mark is enough to establish a trademark, but you can choose to federally register<\/a> it with the USPTO<\/a> to gain some benefits.\u00a0 These include the registered mark as being presumed valid in litigation, it holds others responsible not to infringe on your mark regardless of whether an individual knows about it, and it can stop importation of infringing goods from abroad.<\/p>\n

Whether you register your trademark or not, let\u2019s consider some potential issues.<\/p>\n

Trademark Infringement<\/strong>\u00a0<\/strong><\/p>\n

If you use a mark that is similar to another\u2019s, you could be liable for trademark infringement if that similarity could cause consumer confusion.\u00a0 In other words, if a consumer looking for another\u2019s product is confused by yours, you may have an issue.<\/p>\n

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Image licensed through Unsplash.<\/em><\/figcaption><\/figure>\n

So, how do we know what would cause consumer confusion?<\/p>\n

Courts have identified core factors they analyze when assessing whether two trademarks are likely to create consumer confusion.<\/a> \u00a0One such factor is how similar your good or service is to that of the individual claiming infringement.<\/p>\n

For example, if you\u2019re planning to sell nail polish under the name \u201cPerfect Nails,\u201d it\u2019s highly unlikely that there could be trademark infringement if a company with the same name was selling construction equipment.\u00a0 This is because nail polish and construction equipment are very different classes of goods.\u00a0 And, in fact, there are examples of companies in different industries using the exact same name without issue due to lack of confusion such as Francesca\u2019s the clothing brand and Francesca\u2019s the Italian restaurant.<\/p>\n

If your product and that of the other company is different, you\u2019re likely to not have any infringement issues.\u00a0 However, if consumers think the other company is sponsoring or an affiliate of your product, that likelihood of confusion is grounds for a trademark infringement case.<\/p>\n

But, let\u2019s assume that they are different\u00a0 While it\u2019s a good start, you\u2019re not yet.<\/p>\n

Trademark Dilution<\/strong><\/p>\n

If the name you wish for your company is the same as an already famous trademark in the US, you could run into issues with federal trademark dilution.\u00a0 In these cases, there\u2019s no confusion required for you to be liable.\u00a0 Rather, you could be \u2018diluting\u2019 a trademark by 1) Blurring and or 2) Tarnishing.<\/p>\n

Blurring means that your good (or service) being sold under its name erodes a famous trademark\u2019s power in the market.\u00a0 This can occur whether or not your mark is also famous.<\/p>\n

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Image licensed through Unsplash.<\/em><\/figcaption><\/figure>\n

For example, Nike is a world-famous brand name.\u00a0 When hearing that word, you likely don\u2019t think of anything other than the running brand.\u00a0 There\u2019s a power to that, one that brands care deeply about.\u00a0 Say you\u2019ve decided to honor your passion for Greek mythology and want to name your nail company Nike.\u00a0 Now when someone hears \u2018Nike\u2019 they could think of two things on the market, the mega conglomerate athletic-wear company, and the nail polish.\u00a0 Thus, the Nike mark is now \u201cblurred\u201d as the famous mark has lost some of its recognition power.<\/p>\n

Once again, even if it were out of the realm of possibilities that a customer would think Nike had made a foray into the beauty scene, this could be an issue where the word Nike is blurred.<\/p>\n

Now, onto tarnishment.<\/p>\n

Tarnishment means that associating the famous mark with your good (or service) harms the famous brand\u2019s reputation.\u00a0 This likely occurs when your product is of a lewd nature or is of shoddy quality. \u00a0Again, when it comes to your nail polish (that is no doubt of a superior quality) this likely will not be an issue.<\/p>\n

Cybersquatting<\/strong><\/p>\n

The last claim we will discuss is cybersquatting.\u00a0 Now, this is only an issue when you\u2019re registering a domain name and use another\u2019s trademark in your domain name with bad faith intent to profit from it.\u00a0 For example, if you try and register \u2018www.Opii.com\u201d and hope to sell your nail polish to people who mistakenly type in that extra \u2018i\u2019, that would be a potential cybersquatting.\u00a0 It would also be cybersquatting if you obtained \u2018www. Opii.com\u2019 and then attempted to sell it to OPI with the threat of using it.\u00a0 But, as long as you haven\u2019t in bad faith registered a domain name with the intent to profit off of it, you should be good to go!<\/p>\n

Trademark infringement, dilution and cybersquatting are all claims to look out for if you obtain a trademark, and hopefully now you have a better idea of what they entail!<\/p>\n

\"\"<\/p>\n

Natalie Allen<\/em>
\nAssociate Blogger<\/em>
\nLoyola University Chicago School of Law, J.D. 2025<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

So you have a great idea for a new business and have thought of the perfect name.\u00a0 But what if it turns out there\u2019s a company who has already been using the same (or a similar) name to the one you\u2019re planning on?\u00a0 Or perhaps you\u2019ve registered a domain name that happens to be similar to another\u2019s?<\/p>\n

The good news is this isn\u2019t necessarily a cause to change the name you loved. \u00a0The bad news is there are a couple of claims that could be made against you depending on your circumstances. Continue reading The Name Game<\/span><\/a><\/p>\n","protected":false},"author":57,"featured_media":3064,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11],"tags":[],"class_list":["post-3056","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trademarks"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3056","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/57"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=3056"}],"version-history":[{"count":3,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3056\/revisions"}],"predecessor-version":[{"id":4181,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/3056\/revisions\/4181"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/3064"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=3056"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=3056"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=3056"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}