Question for Law Mags...

[RaccoonFace]

This is a question about product/company names with respect to copyrights/trade marks.

Say one company has a product directed at a certain demographic/sex/race, and I work for a company that has a different product directed at the same market. The names are unintentionally the same, but the product is different. Is this ok in the eyes of the law?

Example:

Colt 45 is a liquor company that directs their marketing toward Black/male/lower income, and my company Colt 45 makes a shoe whose marketing is directed to the same market.

Is there an infringement issue if we share the same name and market, but produce different products?

Thank you for your time and advice!

okbye

[Danno]

I'm no trademark expert, but I'd say yes, it could be a problem. The issue with trademarks is likelihood of confusion. In other words, is the consumer likely to confuse the 2 products/companies. If one company sells beer named "Colt 45" and another sells computer graphics software called "Colt 45", probably fine.

But just because they're different products doesn't mean it is ok, because if they are marketed to the same demographic and it is likely that demographic could see them as being connected in some fashion, that would be a problem.

[JET123]

Not a law mag, but was (very recently) in a similar situation - here are some words of wisdom from my patent lawyer & my business lawyer...

The duration of time & the depths of the financial pockets are good things to consider here. For example, the Coke(r) company had not trademarked the word 'Coke' for a loooooong time. But when it had to defend itself in court against those that chose to use the name 'Coke', the courts sided with the soft drink company on the grounds that they had been publicly & widely using that term, even though they had no documented right to that word.

Now the financial pocket example...

My company had filed the paperwork to trademark a phrase related to my company name. After we had filed the docs, VVDEE-39+1 started using a 99% nearly the same phrase. Turns out they 'fast-tracked' their paperwork and beat us to a nearly identical trademark. We then asked our lawyer about changing our phrase to something just a bit different than theirs (let's call it 95% the same thing for discussion) or continuing with the 99% version. Our lawyer said this - we could do either, but how much money do you want to spend defending yourself against THAT company?

Good point... especially for a start-up!

So we came up with a different phrase that we actually like the best of all.

Moral here? Pick your battles...

[MakersTeleMark]

There is a reason why the USPTO has created a class of goods/services distinction.

[JET123]

Good point - and in my case, there was not enough distinction

[RaccoonFace]

Thanks for the info, lots to think about. How do you make a percentage distinction? Would it make a difference if they were "Colt 45 Booze" and we were "Colt 45 Shoes"? Would that count as making a distinction in market, target, company, or product? Would the addition of the product in the name make it 33% different?

Thank you all so much!!!

okbye

[MakersTeleMark]

Thanks for the info, lots to think about. How do you make a percentage distinction? Would it make a difference if they were "Colt 45 Booze" and we were "Colt 45 Shoes"? Would that count as making a distinction in market, target, company, or product? Would the addition of the product in the name make it 33% different?

Thank you all so much!!!

okbye

The descriptive word would not be protected by trademark, and percentage distinctions don't exist and mean absolutely nothing.

Have a chat with a IP lawyer if you have a real issue.

[toast2266]

I think the legal analysis will look at "likelihood of confusion"
If it seems like the general public will think that colt 45 shoes are made by the same company as colt 45 booze, there could be a problem. Thats really going to be a case by case analysis, but if you're going up against a big company with lots of money, you'll have a tough road ahead of you. Thats assuming that colt 45 booze is federally registered (which I'm sure it is). If you go up against a mark that isn't federally registered, then it would only be an infringement within their geographic area.

For the record, I'm not (yet) a lawyer, so if you think you really have a problem, as Makers said above, talk to an IP attorney.

[TNKen]

"Likelihood of confusion" is the test, and to prove no likelihood of confusion, you will spend a jazillion dollars hiring expert witnesses and statisticians in an attempt to prove your point. In my mind, just hearing the brief data, you gotz a problem and a mountain to hurdle.

[lionelhutz]

Having just took this class this last year I have to agree. If you are using the same name as something as well known as Colt 45 you are in trouble. That name whether destcriptive or not has acquired secondary meaning and is going to get protection.
Change the name.

[RaccoonFace]

Thanks for the insight, and to clear one thing up, "Colt 45" was just a name being used as a hypothetical example and neither of the companies are as big as Colt 45; but I think I get the idea. I've made a couple of appointments to see if the real situation fits this profile. Thank you all so much for helping me become more informed. At least I won't go into meetings unarmed.

Thanks again!

okbye