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Intellectual property laws online question. Need your ideas

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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

Posted

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 at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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4 lawyers agree

Posted

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 areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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1 comment

Maurice N Ross

Maurice N Ross

Posted

Frank. I agree that you cannot trademark generic or highly descriptive marks such as "Phone Cards". But the phrase "direct phone cards" is clearly not generic, nor is it highly descriptive. Indeed, the use of the word "direct" takes this into the realm of a fanciful trademark. Certainly if there is even a little secondary meaning in the eyes of the public, company A would have a viable trademark case against company B (I am not commenting on the economic viability or the practical economic considerations---just the legal ones).

Posted

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.

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Posted

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.

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Posted

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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