Intellectual property laws online question. Need your ideas

Asked over 1 year ago - 10021

company A has registered copy right name of for example " PhoneCards Direct" and has a website of "www.DirectPhoneCards.com"
Now, case B is an individual, opens a website with a different domain name for example " www.CheapCards.com" But when you go to this individual B website says " Direct Phone Cards USA"
Basically, the name of the company of the individual B is revised from company A and has an extra "USA"
Company A website says- " PhoneCards Direct"
Individual B website says- " Direct PhoneCards USA"
Now company A says to individual B that your name is somehow close to my name and demand 100k since buyers MAY confused in names.

BUT the name individual B has is DIFFERENT and has extra wording. Does company A has a case here since combination of name is same?!

Attorney answers (5)

  1. Michael David Siegel

    Pro

    Contributor Level 15

    2

    Lawyers agree

    1

    Answered . You have a prima facie case, meaning the elements of a trademark case are there. The problem is proving damages, and market confusion. A trial on this would be more than 100K.

  2. Bruce E. Burdick

    Pro

    Contributor Level 20

    4

    Lawyers agree

    Answered . Company A may have a claim. I think it is more than just scaring.

    The names are slightly different, but the determination is made using a nine-factor test :
    (1) the strength or distinctiveness of the plaintiff’s
    mark as actually used in the marketplace; (2) the
    similarity of the two marks to consumers; (3) the
    similarity of the goods or services that the marks
    identify; (4) the similarity of the facilities used by
    the markholders; (5) the similarity of advertising
    used by the markholders; (6) the defendant’s intent;
    (7) actual confusion; (8) the quality of the defendant’s
    product; and (9) the sophistication of the consuming
    public.

    This is a very fact dependent inquiry, not just a simple name comparison. You need to consult a trademark litigation attorney to compare the facts against the nine factors.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more
  3. Maurice N Ross

    Pro

    Contributor Level 20

    2

    Lawyers agree

    Answered . See my answer to your other question. In all likelihood Company A has a strong case for trademark infringement. The issue is whether there is a likelihood of consumer confusion. That clearly is so. Merely changing the placement of the word "direct' and adding "USA" does not avoid consumer confusion if company A started using its trademark in commerce before Company B. If company A registered its trademark with the U.S. Patent and Trademark Office, this is even more clear. Company B quite obviously made a bad branding decision here---mostly likely because it was not represented by counsel when it chose its branding.

  4. Frank Anthony Natoli

    Pro

    Contributor Level 19

    1

    Lawyer agrees

    Answered . Hi,

    While I agree with my collegue, let me offer this much more. You cannot really protect highly descriptive and generic names such as this. If you are selling phone cards directly to consumers then you cannot use the name "direct phone cards" as a trademark (which is what we are talking here, not copyright). Why? Because it merely described what you do or what you sell.

    That said, there are in some cases ways to ptotect a highly descriptive mark but one would have to show secondary meaning (see link below) and I am not so sure these names would not be considered generic which simply cannot be protected.

    Having them as a domain however is different and is not necessarily serving as a trademark.

    I would suggest you consult a TM lawyer just so you really understand all the issues here. I will link you to some helpful into below and you can contact me if you care to discuss.

    Best regards,
    Frank
    Natoli-Lapin, LLC
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the... more
  5. Ray Beckerman

    Pro

    Contributor Level 12

    Answered . A question like this cannot be answered in the abstract. I would need to know all of the actual domain names and web site titles, and details of the the types of business carried on by each company.

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