Name Disputes -- Who Won? Who Lost?

 


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Companies invest a lot of money in naming their products and services – trying to achieve a distinctive and memorable name that conveys their brand image to the market place. Name disputes arise when someone else uses a name that is “confusingly similar” and seems to “trade off” the established business name. The cases below highlight some name disputes. Test yourself – who do you think won these disputes? Answers are below.

(1) Federal Express v. Federal Expresso?

Federal Expresso, a coffee shop/espresso machine importer picked the name when considering a location near the Federal building. Federal Express, the overnight shipping service, objected.

Who won?

(2) Prozac v. Herbrozac?

Eli Lilly objected to the name Herbrozac, an herbal product, designed to achieve similar results to Eli Lilly’s antidepressant Prozac.

Who won?

(3) Spam (by Hormel) v. Spa’am (Jim Henson muppet in “Muppet Treasure Island”)

Hormel contended that Henson's use of the character “Spa'am" in its movie and related merchandise would infringe and/or dilute Hormel's trademark in the luncheon meat SPAM.

Who won?

(4) re: “Clue.com”

Hasbro, owner of the detective board game, Clue, objected. to Clue Computing’s use of website Clue.com.

Who won?

(5) re: “thebluenote.com”

Bensusan Restaurant Corp. (owner of “The Blue Note”, NYC) objected to Richard King’s use of the website thebluenote.com. Richard King operates a business called “The Blue Note” (Columbia, MO)

Who won?

(6) re panavision.com

Dennis Toeppen set up a joke website, panavision.com, with photos of Pana, IL and then demanded money from Panavision International.

Who won?

(7) re veronica.org

Archie Comics objected to the Sams Family’s website full of photos of their two-year old daughter, Veronica

Who won?

The answers are interesting. The big companies don’t always win.

Winners:

(1) Federal Espresso. It doesn’t compete for overnight deliveries; customers for overnight delivery are savvy enough to distinguish between coffee and delivery; and the delivery mammoth had no fears of losing business to the two-outlet coffee shop.

(2) Prozac. The name “Prozac” has no meaning outside the product it was created for, so a strikingly similar name can only have been selected to attract consumers looking for “Prozac”.

(3) The Muppets. Spa’am’s name was only used once in the movie, and he was not, as Hormel asserted, the porcine embodiment of evil, just the leader of a tribe of wild boars devoted to the worship of Miss Piggy.

(4) Clue Computing. Clue.com was set up for legitimate commerce, not as cybersquatting. Consumers would be unlikely to confuse the services of a single-employee consulting firm with the detective board game. A trademark holder is not automatically entitled to use that mark as its domain name.

(5) King. King’s Web site clearly did not appeal to customers of the New York “Blue Note” even though it could be viewed by New York residents, because his own location was in Missouri. The New York club was not losing business to the Missouri club.

(6) Panavision International. Dennis Toeppen’s money demand cast Toeppen in the role of cybersquatter.

(7) The Sams Family. Archie Comic Publications heavy-handed cease and desist letters and the public’s negative response to the giant publisher possibly suing the baby persuaded the company to cease and desist itself. Not even cartoon customers would have confused the baby pictures with Archie’s girlfriend.

In conclusion, names are important. When selecting a name for your products or services, you’ll want to check out that no one else is already using that name. If the name you select is similar to an existing one, you will want to consider whether your use is sufficiently different, to avoid a battle (different type of service such as Federal Expresso, or different geography such as thebluenote.com). You’ll also want to take steps to legally protect your name, by registering the domain name and applying for a Trademark. Once you’ve taken steps to legally protect your name, you will be better positioned to defend your name against copycats.

Jean Sifleet is a practical and experienced business attorney whose career spans many years in large multi-national corporations and includes three successful entrepreneurial ventures. Jean has extensive experience in dealing with intellectual property matters in the large and small companies and as a small business owner. She has authored numerous books and publications on avoiding legal pitfalls in doing business. This article is excerpted from her new book, Advantage IP – Profit from Your Great Ideas (Infinity 2005). For more information, Jean's website is http://www.smartfast.com .

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