Using synonyms or related keywords?

Discussion in 'Legal Issues' started by digip, Feb 24, 2008.

  1. #1
    Can using synonyms or related keywords be considered TM infringement? Like for example, if I started a domain business site called GoFather.com or an insurance company called StateBarn.com ?

    Thanks in advance,

    -DigiP
     
    digip, Feb 24, 2008 IP
  2. bluegrass special

    bluegrass special Peon

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    #2
    It depends on the content of the sites. If they are competing sites (like an insurance site called statebarn) then a judge might find it infringing.
     
    bluegrass special, Feb 24, 2008 IP
  3. digip

    digip Peon

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    #3
    Sorry, maybe I didn't clarify my post as it might have sound confusing.

    Is StateBarn a TM Infringement of StateFarm if it was used for an insurance industry?

    Is GoFather a TM Infringement of GoDaddy if used for a domain business?

    What about having related words not but not necessary synonyms.

    For example, is GoParents a TM infringement of GoDaddy if used for a domain business?

    Thanks in advance,

    -DigiP
     
    digip, Feb 24, 2008 IP
  4. bluegrass special

    bluegrass special Peon

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    #4
    It would really depend on the judge, but the likely answer is yes. Particularly with the two examples you listed. If you picked less well know trademarks the answer might be no. The courts will look at several things:

    similarity of the two marks in phonetics, meaning, and general impression
    similarity of goods offered
    strength and famousness of the plaintiff's mark
    intent of the defendant in using the mark
    actual or likelihood of confusion

    There are a few other things they look at, but using just those a judge would likely find that you were trying to use your competitor's name to confuse consumers. Sometimes, even when the goods being offered are completely different the courts find for the plaintiff (examples: Toys R Us v Adults R Us, RadioShack v just about anybody that uses the word shack - RadioShack often wins).

    Your biggest problem is the famousness of these two marks. They are so well known that they essentially get extra protection.
     
    bluegrass special, Feb 25, 2008 IP