The fictional example below replicates my situation:

  • A company already creates websites and owns a trademark with a pattern like XXX4 (e.g. "WEB4").

  • My company builds websites for children and I want to give it a name like xxxForyyy (e.g. "WebForKids")

Cann I use "webforkids" for my company? What do I risk if I do so?

  • WEB4 and WebForKids seem different. But if it was WEB4KIDS and you named yours WebForKids, that's another issue. Is the issue with the 4 vs. for vs. four? – Brandin Nov 6 '17 at 11:07
  • Hi Brandin. Yes the trademark that already exists is like "WEB4" or "WEB2". My concern is about creating a trademark called "WebForKids" or "WebToKids" – Gogo123 Nov 6 '17 at 11:48
  • I mean your example asks for different things - first you are changing a digit to a word, and second you are adding a word. You are also changing the capitalization, so I don't know how one can say in general whether it is infringing a trademark. – Brandin Nov 6 '17 at 13:43

There is no general answer to this question.

A trademark prohibits sales using the mark or a mark that is confusingly similar to the mark.

The determination of whether two marks are confusingly similar is a question of fact that has to be resolved on a case by case basis, often with consumer surveys, evidence of actual incidents where the two were confused, or expert testimony.

Two marks that may superficially seem dissimilar could, in practice, actually result in large numbers of cases of actual confusion, while two marks that superficially seem quite similar may never confuse anyone.

The nature of the typical consumer matters. For example, in cases involving products marketed at children, one of the important empirical questions is whether the true decision maker in the choice between two products is the child or the parent. If the decision maker is the child, what is confusing is likely to be different than it is when the true decision maker is the parent.

As a practical matter, which could also be a defense if an infringement action is later brought, doing some focus groups or consumer surveys on the down low to determine if people actually get confused before launching your product may be prudent to avoid future risk.

It would also be useful to research the litigation history of the owners of marks that could potentially be claimed to be infringing. Some marks are vigorously guarded with regular litigation of potential infringers in even marginal cases, while other marks are placed in a file and never actually litigated even in the face of arguable infringement.

None of this is a guarantee, but it would help you to evaluate your risks.

  • thanks ohwilleke that really helps. Do you besides have any idea of the risk I take ? I mean I can afford to change the name of my service in case I'm contacted by the trademark owner. But is it possible that I will be condemned to pay them thousands of dollars? – Gogo123 Nov 6 '17 at 18:22
  • The stakes depend mostly upon the economic volume of the affected transactions. If both are $10,000,000 a year businesses and there is an alleged 10% confusion, it could be huge stakes. If this is a $100 a year business, it would be hard to argue that there were huge damages even if there was nearly 100% confusion. There is no requirement to send a cease and desist letter before bringing suit, but this is often done because damages are greater for intentional infringement than negligent infringement. – ohwilleke Nov 6 '17 at 18:25

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