Use of other company's trademark in business/product name

nekogomi

Sorry about the double post, but I just thought of one more question to "tack-on" to what I asked above:

If the party that has the consulting business were to have a generic non-trademarked name like "Internet Consulting" and have the corresponding generic url like www.InternetConsulting.com, could they market and sell a service and/or product called "Easy YouTube Set-Up" without being guilty of trademark infringement?

Thanks again,
Andrew

DJoshEsq

You will need to speak to an experienced trademark attorney regarding this.  No one can answer this question without the actual marks that you are using. 

In your example, you use the mark You Tube, which is arguably a famous mark which has a much broader scope of protection than a non-famous mark.

It is unlikely that your generic terms "Internet Consulting" would infringe anyone's trademark, but that doesn't cure your use of "Easy YouTube Set-Up", which still may infringe on someone's trademark.

I am happy to offer a free consultation by telephone.  Good luck.

nekogomi

Fair enough, Josh.  I probably should have asked my question differently...  Rather than giving some BS hypothetical with the hopes of extrapolating to my own situation, I should have just asked for a summary of what the law says in this regard (and the source so I can read it myself).

So, to start over...

Can anyone give me some helpful information about what the law says in terms of using another party's trademark as part of a product or service name - specifically one related to providing educational training on the product associated with the trademark?

For example, Adobe owns the trademark to the term "Photoshop" as associated with their image editing software.  Yet, there are plenty of companies (Lynda.com comes to mind first) that sell videos and books, and even training services, that are all named something like "Adobe Photoshop Training CD/Book/etc."  Does the law allow for this type of use, or is it likely that Lynda.com and others have paid licensing fees to use Adobe's trademark as such?

Thanks,
Andrew

JSonnab...

Generally, you can refer to a product by its trademark as long as you are referring to the actual "trademarked" product.  For example, you could post an advertisement that offered "Beginner lessons in Adobe Photoshop". 

It's much dicier to adopt a mark that incorporates another's mark, even if you provide services connected to the "trademarked" product.  I'd be a bit nervous offering the aforementioned services under the mark "Photoshop Beginner", for example.

- Jeff

nekogomi

Thanks, Jeff - I appreciate the information.

Along those same lines, what about having a website that offers the product "Beginner Lessons in Adobe Photoshop" with a URL of www.LessonsInAdobePhotoshop.com or www.AdobePhotoshopLessons.com?

I guess I'm not sure what the distinction is between, as you put it, "refer(ing) to a product by its trademark as long as you are referring to the actual 'trademarked' product" and "adopt(ing) a mark that incorporates another's mark, even if you provide services connected to the 'trademarked' product."

Is the difference one related to the degree of descriptive specificity of how the mark is used?  Meaning, in your first example, "Beginner lessons in Adobe Photoshop" is a very precise description of a specific service, but in the second example, "Photoshop Beginner" there isn't a very clear description of what type of service would be provided?

I'm trying to wrap my head around what you wrote, so I can understand it well.  In that spirit, if I'm being obtuse and not getting something that is very simple, please accept my apologies.

Thanks,
Andrew

JSonnab...

Andrew -

Domain names alone are not trademarks.  The domain must be used elsewhere as a mark to qualify.  That said, even a non-mark use of someone else's mark in a domain might be enough to raise their ire, perhaps enough to sue, even if the merits don't ultimately favor their position.

All that aside, the test for infringement is not a bright line test, with that in mind, you're not going to get any reliable advice here as to whether the examples you gave (or any other examples) do or don't infringe.

- Jeff

Dave_Zan

Few companies like Microsoft post guidelines on their web site indicating how
they will allow certain uses of their marks. But just the same, try to ask their
"permission" or so.

While what you're asking can benefit the mark holder, it can also give people
the impression the mark holder's endorsing it when they're really not, or it can
"dilute" (sorry, can't find the right word) their own advertising campaigns.

DJoshEsq

It sounds like you are raising a fair use issue.  For example, you are using another's trademark to advertise your own services.  This too is a factual inquiry that will likely require consultation with an attorney.  However, even a legitimate fair use may cause the trademark owner to attempt to prevent your use. 

If you don't want to speak with an attorney, you should at least read a recent Supreme Court case ot his issue - KP Permanent Make-up v. Lasting Impressions. 

Good luck.