Trademark Trademark Question

[Janz Hobbs]

Jurisdiction

Texas

Hello-

I am building an online-only business (don't want to give a specific name, so I'm using fictitious info here) and am concerned that what I've chosen could be a trademark issue.

Let's say "YourYardCard.com" is my business name. (Purpose is to sell a discount card for gardeners.)

I'd like the name to appear as Your Yard Card on the website. (Or if it has to appear as YourYardCard.com that's fine.)

BUT......

YardCard.com already exists (it's a golf tournament yardage guide)...

AND YardCard is trademarked (this is a fictitious example...it is not tm in real life, but it is a real website).

The business name on the webpage is "YardCard" — 1 word.

My thinking is that because my business is technically 3 words (Your Yard Card) and the trademarked name is 1 word — YardCard — I should be okay to pursue using YourYardCard as a business name with YourYardCard.com as the website address.

Also, it's not a competing industry, if that matters.

Please let me know what you think.

Many thanks!

(also, fyi because this site asks for jurisdiction, I'm in Texas but will be moving to Massachusetts)

 

[army judge]

Please let me know what you think.

You need a lawyer before you drop another dime on this venture.

What you don't need is information from strangers.

 

[Janz Hobbs]

You need a lawyer before you drop another dime on this venture.

What you don't need is information from strangers.

Please. What is this site for anyway, Army Judge?

First of all, don't assume I have "dropped a dime" on anything. I have not.

And I'm not an idiot, thank you very much. I came here to start my quest on whether or not I should pursue this name, and as a matter of fact, this is what it says at the top of the home page for "TheLaw.com:"

"Ask Legal Questions
TheLaw.com has provided free legal help, legal forms, advice and assistance from attorneys and the community since 1995."

If there is an attorney here who can read my question and knows right off the bat that there's no way my proposed name will fly, or some other helpful comment, please share.

If you just want to say "hire an attorney," thanks, that's been covered now. Also, I plan on it...unless I find out through helpful attorneys here who are willing to give me advice and tell me to run as fast as I can from that name.

 

[army judge]

First of all, don't assume I have "dropped a dime" on anything. I have not.

What you do is of no moment, import, or concern to me.

And I'm not an idiot, thank you very much. I came here to start my quest on whether or not I should pursue this name, and as a matter of fact, this is what it says at the top of the home page for "TheLaw.com:"

If you say so.

Now, have yourself a pleasant day.

 

[Zigner]

If there is an attorney here who can read my question and knows right off the bat that there's no way my proposed name will fly ...

There is nobody who could offer you any sort of definitive answer.

... or some other helpful comment, please share.

The MOST helpful comment you can receive is that you should discuss this with an attorney.

 

[zddoodah]

YardCard is trademarked (this is a fictitious example...it is not tm in real life, but it is a real website).

Let's start here. "Trademark" is not properly used as a verb. A name may be a trademark (noun), but you cannot trademark (verb) a name (and, thus, a name cannot be "trademarked"). Often, when folks use "trademark" as a verb, they are referring to registering a trademark (with the U.S. Patent and Trademark Office or the analogous state agency). While registering one's trademark is typically a good idea, it is not a prerequisite to having rights in a trademark. One acquires rights in a trademark by using the mark in commerce (or having a bona fide intent to do so).

Getting back to your hypothetical, if "YardCard" is used in connection with a commercial website, then the person using it has rights in that mark.

My thinking is that because my business is technically 3 words (Your Yard Card) and the trademarked name is 1 word — YardCard — I should be okay to pursue using YourYardCard as a business name with YourYardCard.com as the website address.

There's nothing "technical" about this. Essentially, what you've done is that you've taken an existing two-word mark and added a third word to it. That may make your mark confusingly similar,** but the similarity of the two marks is not the only relevant inquiry.

The ultimate issue in trademark infringement law is likelihood of confusion: is the junior mark likely to cause confusion among consumers.

Also, it's not a competing industry, if that matters.

It matters greatly. There is a cereal called "Life" and a board game called "Life," and there used to be a magazine called "Life." Identical marks, but all are in very different market segments, so there was no infringement.

fyi because this site asks for jurisdiction, I'm in Texas but will be moving to Massachusetts

Well...this may be a bit difficult to wrap your arms around, but trademark law exists on both the federal and state level. Most folks are concerned about federal law unless their operations are limited to a single state. On the federal level, trademark law is supposed to be uniform throughout the country, but it actually differs in terms of trademark infringement by circuit. Texas is in the Fifth Circuit, and Massachusetts is in the First Circuit. The First Circuit tests likelihood of confusion with a set of eight factors called the Pignon factors, and the Fifth Circuit also uses an eight factor test that doesn't have a name. The factors are all similar but are slightly different, and you can read a bit about each circuit's test here.

 

[Janz Hobbs]

Let's start here. "Trademark" is not properly used as a verb. A name may be a trademark (noun), but you cannot trademark (verb) a name (and, thus, a name cannot be "trademarked"). Often, when folks use "trademark" as a verb, they are referring to registering a trademark (with the U.S. Patent and Trademark Office or the analogous state agency). While registering one's trademark is typically a good idea, it is not a prerequisite to having rights in a trademark. One acquires rights in a trademark by using the mark in commerce (or having a bona fide intent to do so).

Getting back to your hypothetical, if "YardCard" is used in connection with a commercial website, then the person using it has rights in that mark.



There's nothing "technical" about this. Essentially, what you've done is that you've taken an existing two-word mark and added a third word to it. That may make your mark confusingly similar,** but the similarity of the two marks is not the only relevant inquiry.

The ultimate issue in trademark infringement law is likelihood of confusion: is the junior mark likely to cause confusion among consumers.



It matters greatly. There is a cereal called "Life" and a board game called "Life," and there used to be a magazine called "Life." Identical marks, but all are in very different market segments, so there was no infringement.



Well...this may be a bit difficult to wrap your arms around, but trademark law exists on both the federal and state level. Most folks are concerned about federal law unless their operations are limited to a single state. On the federal level, trademark law is supposed to be uniform throughout the country, but it actually differs in terms of trademark infringement by circuit. Texas is in the Fifth Circuit, and Massachusetts is in the First Circuit. The First Circuit tests likelihood of confusion with a set of eight factors called the Pignon factors, and the Fifth Circuit also uses an eight factor test that doesn't have a name. The factors are all similar but are slightly different, and you can read a bit about each circuit's test here.

zddoodah - Thank you so much for your insightful and helpful answer. It is exactly the kind of information I was seeking and I really appreciate you taking the time to explain it all. It will certainly help in my decision of whether or not to consult with an attorney.