Compounds, sound alikes, trademarks, direction for CHs


#1

I probably should have put this under How to Improve this site, but I wanted to get feedback from other creatives as a stand-alone post.

I’ve run into the issue of CHs saying that a name is "too much like…(fill in the blank)… and I feel that CHs are passing up really good names because of it. For example, let’s say you submit PrettyBook (fictitious name, but it probably exists somewhere) and the CH rejects it and says “too much like Facebook”…

I feel like CHs may be rejecting great names that are using common words…names that could be “like” another name but are not the same name and definitely not in the same business.

How does this work with trademarks? Does Facebook OWN the words Face and Book so they cannot be used in any other name? (probably not!)

I an wondering if SH could give more direction to CHs up front so they can feel more comfortable with names like these? What have other creatives encountered along these lines?


#2

I am learning… to understand more about trademarking and learning real word is the most challenging??? So there is a learning curve … and as we put in INPUT I a sure squad help will make changes so if hey can have some back end coding to assist with “NAMES” ideas etc that are being submitted may help but not limit or isolate creativity … it is a very challenging topic to decipher


#3

Same here. I have heard the “too similar” a few times, very frustrating, like you said it’s usually no where near the same business.


#4

This is a wrong policy. The same name is not forbidden to use for registration of different classes of trademarks. I think that the system should allow such names. And even more similar names.


#5

Are you saying that SH is giving out legal advice concerning trademarks?


#6

In some sectors you cant use names that have different spellings but sound the same.For example you couldnt have FaycBuck Imagine


#7

@Edukar the system allows the names, I am talking about CHs who are worried about sounding too much like another name.
@Arnet NO, I’m not saying that. I’m saying it would be nice if CHs had some kind of direction on this. I think SH has a trademark check service, for those CHs who want it, though. But I am not sure what that involves.
@CreativeJohnny That is true.

Thanks for all of your comments, everyone!


#8

I have a similar Qs: I entered a compound name abcxyz.com and CH added a note that it is similar to company xyzabcInc.com - may have conflict.
Is it possible to have trademark issues in this case?


#9

I would think only if xyzabcInc is really trademarked. And then, only if it is in the same industry??? If you scroll through USPTO, there are many companies that have trademarked the same names or variations of them but are in different industries.


#10

I think sometimes when a CH says “potential conflict” they really mean potential confusion among customers trying to remember the name, search for it, etc. Same name companies in different sectors can certainly work (think Dove chocolate and Dove soap), but for a new company, a CH may just not want the hassle. I don’t think anyone should have to be convinced to like an entry; to me, no means no.


#11

@Commulinks - This is a tricky situation for several reasons.

  1. Yes. Facebook can pursue a name like Prettybook for Trademark Violation…They can take action against anyone really. Will they win? Probably not. Does any startup want to get into a legal battle with Facebook? Probably not.

  2. Sometimes “It’s to much like XYZ,” is not a Trademark issue, but a branding issue. Depending on your naming criteria, choosing a name that does not align with any other major brands could be very important.


#12

GREAT response, @grant! thank you!


#13

Sometimes, it can be beneficial, though… like having the same kinds of stores in one shopping center.


#14

Exactly, take a look at Capital One and Credit One. The names are very similar, the logos are very similar, and their businesses are very similar, but Capital One, as far as I know, has never sued Credit One.

First National Bank of Marin (FNBM) changed its name to Credit One in 2006. Signet renamed its credit card subsidiary Capital One in October 1994. So, Capital One was a business and was well-known when Credit One came into existence.

Capital One could easily argue that Credit One knew that the name was similar, knew that the logo is similar and that they are both in the credit card business. They could further state that Credit One used their name to confuse and steal customers. I guess Capital One has determined that it isn’t worth the expense yet.