"Famous Last Words"

By Any Other Name... (June 2005)

Dear Jim,

I want to create a digital distribution program. The question I have is this: would I be entering dangerous legal territory if the name I wanted for this program happened to be along the same naming convention as a certain popular proprietary distribution program. I'm thinking of a name like Ice, Vapor, etc.

Dear KS:

This all depends on what you regard as “dangerous legal territory”. Where is your comfort zone in the area of risk and potential liability?

The name you give your program is the trademark under which it will be known.

The most central purpose of a trademark is to identify the origin of the goods or services to which it is attached.

And the most central issue in any trademark dispute is whether the claimed infringing mark leads the public to believe that the goods or services of the purported infringer come from the party who claims its mark has been taken.

From here it gets more complicated. Some marks are regarded as “stronger” than others. For example, an invented word like “Exxon” or “Kodak” or “Xerox” which did not exist in any language until it became a trademark associated with a company or product, is stronger than a mark that is more widely used and has a general meaning apart from its use as a trademark. “Arista,” “Acme,” or “Superior” are three examples of weak marks.

If a mark is strong, it can challenge any use across a wide range of goods or services. For example, it is highly doubtful that anyone selling even Exxon toothpaste could survive a trademark challenge by Exxon-Mobil.

On the other hand, there may be Arista barber shops in every city across the country.

In the middle are marks that are derived from a place, person, or thing. “Cadillac” is a town in Gironde, France, and the name of a great American Indian chief. General Motors' “Cadillac” trademark is known around the world for automobiles. But Cadillac is also a brand for dog food. No one confuses dog food with motor cars. Use of this mark by both companies is not regarded as infringing. But it is doubtful that a Cadillac motorcycle manufactured by anyone other than General Motors could withstand a trademark attack.

Marks can be infringing even if they are not the same. A mark that is evocative of another can be regarded as causing confusion. For example, if the mark used for my middleware product were “Stellar” and you later adopt the mark “Solar” for a similar product, because they are similar in both sound and meaning, I may regard your use as infringement.

Similarly, marks may be confusing and infringing if they sound similar, even if the spelling and context were to be different. “Fat Man Donuts” may be infringed by “Phattmunn Bakery.”

In order to give a more definite answer to your question, additional facts must be known. We would have to consider the name you want to use, the name of the your competing product, the nature and audiences of the two, names of other competitors in this and similar fields or categories, and your own level of comfort with risk.

In the end you have to weigh how important is that particular name. The consequences of using it must be weighed with any advantage it may bring. And the advantage may be, in fact, a two-edged sword. The simple fact that you chose the name, it is similar to a competing product, and people have a built-in positive association with your name, may be evidence that the use is, in fact, an infringement.

Also consider that getting involved in a trademark dispute at just the time when you are trying to get your business started, can be a huge distraction.

For a thorough discussion of trademarks and other forms of intellectual property rights, download the IGDA's "IP Rights White Paper".