Trademark Question

[bluedevilphish]

What is the name of your state (only U.S. law)? Florida

I own and run a personal finance blog (Money Life and More) under the company named Money Life Media, LLC. I received a request from the company that owns the trademark MONEYLIFE to quit using Money Life in my business. Is my use of Money Life trademark infringement? I never use only the words MONEYLIFE with no space and I don't sell any products on my site.

Thanks for any help.

 

[Zigner]

What is the name of your state (only U.S. law)? Florida

I own and run a personal finance blog (Money Life and More) under the company named Money Life Media, LLC. I received a request from the company that owns the trademark MONEYLIFE to quit using Money Life in my business. Is my use of Money Life trademark infringement? I never use only the words MONEYLIFE with no space and I don't sell any products on my site.

Thanks for any help.

Your use probably is infringing. Consult with a local IP attorney.

 

[quincy]

What is the name of your state (only U.S. law)? Florida

I own and run a personal finance blog (Money Life and More) under the company named Money Life Media, LLC. I received a request from the company that owns the trademark MONEYLIFE to quit using Money Life in my business. Is my use of Money Life trademark infringement? I never use only the words MONEYLIFE with no space and I don't sell any products on my site.

Thanks for any help.

I agree with Zigner that having an attorney in your area take a look at the notice you received is a good idea. I am not so sure, however, that your use of the words "Money" and "Life" for your "Money Life and More" blog would be found infringing.

First, a "MoneyLife" mark is not an especially strong mark. The words are common words that, separately, can be used by anyone. Unless or until these words together become known in the public's mind as connected to a particular company and its goods or its services, it remains a relatively weak mark. Money and Life together need to become established in consumers' minds and acquire a secondary meaning to receive the most protection under trademark law.

Second, the owner of the registered mark in the U.S. appears to be a ministry, which applies Biblical principles to their products/services. I do not see any Biblical leanings in your economic blog blurbs. Whether this could lead the ministry to believe your blog dilutes the value of their mark is something I can't tell you, but I am not sure it is a convincing argument against your use of the words Money and Life to identify your personal finance blog.

Third, there is another owner of the same mark located in India, and this owner uses the names Money and Life and covers economic news and trends (primarily those of India) as you do (but primarily those of the U.S.). If this Indian company is the one that contacted you, it is located in India and does not appear to have a registered mark in the U.S., and any infringement action taken against you would need to be taken in the United States. I personally do not see this happening, due to the costs involved and the strong possibility they would not win.

Fourth, I do not see that a consumer would be confused by the dual uses of the marks in the U.S. (yours and the 2010 registered mark of the ministry). Perhaps a consumer might be confused enough to click on your link thinking it was connected to the other company, but there the confusion should end.

Fifth, I see no monetary damages that can be claimed by the U.S. company over your use of your blog name.

With all of that said, however, you received a notice that this company believes your blog name is infringing on their rights - and any infringement notice should be taken seriously. It is up to a trademark owner to police and enforce their rights in their mark, so they don't lose these rights. The company owning the registered mark, therefore, was smart to notify you of their ownership in the same or similar name used for their company identifier.

The most I see happening is that a court could eventually issue an injunction, preventing you from using of the name "Money Life and More" for your blog name. I personally do not feel this would happen - but I would not rely on my feeling here.

I think it important that you review all facts with an attorney in your area. Good luck.

 

[LdiJ]

I agree with Zigner that having an attorney in your area take a look at the notice you received is a good idea. I am not so sure, however, that your use of the words "Money" and "Life" for your "Money Life and More" blog would be found infringing.

First, a "MoneyLife" mark is not an especially strong mark. The words are common words that, separately, can be used by anyone. Unless or until these words together become known in the public's mind as connected to a particular company and its goods or its services, it remains a relatively weak mark. Money and Life together need to become established in consumers' minds and acquire a secondary meaning to receive the most protection under trademark law.

Second, the owner of the registered mark in the U.S. appears to be a ministry, which applies Biblical principles to their products/services. I do not see any Biblical leanings in your economic blog blurbs. Whether this could lead the ministry to believe your blog dilutes the value of their mark is something I can't tell you, but I am not sure it is a convincing argument against your use of the words Money and Life to identify your personal finance blog.

Third, there is another owner of the same mark located in India, and this owner uses the names Money and Life and covers economic news and trends (primarily those of India) as you do (but primarily those of the U.S.). If this Indian company is the one that contacted you, it is located in India and does not appear to have a registered mark in the U.S., and any infringement action taken against you would need to be taken in the United States. I personally do not see this happening, due to the costs involved and the strong possibility they would not win.

Fourth, I do not see that a consumer would be confused by the dual uses of the marks in the U.S. (yours and the 2010 registered mark of the ministry). Perhaps a consumer might be confused enough to click on your link thinking it was connected to the other company, but there the confusion should end.

Fifth, I see no monetary damages that can be claimed by the U.S. company over your use of your blog name.

With all of that said, however, you received a notice that this company believes your blog name is infringing on their rights - and any infringement notice should be taken seriously. It is up to a trademark owner to police and enforce their rights in their mark, so they don't lose these rights. The company owning the registered mark, therefore, was smart to notify you of their ownership in the same or similar name used for their company identifier.

The most I see happening is that a court could eventually issue an injunction, preventing you from using of the name "Money Life and More" for your blog name. I personally do not feel this would happen - but I would not rely on my feeling here.

I think it important that you review all facts with an attorney in your area. Good luck.

Having been through a trademark battle...I most emphatically agree with this advice.

However, I will add one more caveat...If the entity in question has deep pockets, and they get involved with an attorney who is willing to milk those deep pockets, then you could end up spending fairly significant money to defend yourself. Sometimes its necessary to do a cost analysis. It cost the company about 20k to deal with a predatory attorney for a company with deep pockets, but it would have cost us 10 times that, and maybe even more to give up our rights to our name. So the battle was absolutely worth it for us. Your figures would not be the same, might be only a small fraction of our costs, or might be more, but you still would have to weigh the cost analysis.

 

[quincy]

Having been through a trademark battle...I most emphatically agree with this advice.

However, I will add one more caveat...If the entity in question has deep pockets, and they get involved with an attorney who is willing to milk those deep pockets, then you could end up spending fairly significant money to defend yourself. Sometimes its necessary to do a cost analysis. It cost the company about 20k to deal with a predatory attorney for a company with deep pockets, but it would have cost us 10 times that, and maybe even more to give up our rights to our name. So the battle was absolutely worth it for us. Your figures would not be the same, might be only a small fraction of our costs, or might be more, but you still would have to weigh the cost analysis.

It can be costly to fight a trademark infringement action, certainly, especially if both parties feel they have rights to a mark. A party with less money can often be intimidated into giving up legitimate rights they may have in order to avoid the expense of a suit.

Depending on the facts as personally reviewed by an attorney in his area, though, bluedevilphish might find that a simple letter drafted by his attorney to the MoneyLife trademark holder can be enough to prevent a suit. If the registered trademark holder cannot demonstrate any monetary losses or consumer confusion, the company may be as reluctant to initiate any action as bluedevilphish is to have one initiated against him. They will be weighing the costs/benefits in other words, too.

Then again, sometimes, if one has not invested a lot of time, energy or money into a business, it can often make financial sense to simply cede the matter and move on - and in moving on, picking a company identifier that is unique to that company alone, so there will be no future trademark challenge.

 

[bluedevilphish]

Thanks much for your opinions. I will talk to a local attorney should I decide to fight this.

 

[quincy]

Thanks much for your opinions. I will talk to a local attorney should I decide to fight this.

You're welcome, bluedevilphish.

I think, from what you have posted, that you have good support for continuing your use of your blog name - but talking it over with an attorney in your area would be smart.

Good luck. I like your blog.

 

[LdiJ]

It can be costly to fight a trademark infringement action, certainly, especially if both parties feel they have rights to a mark. A party with less money can often be intimidated into giving up legitimate rights they may have in order to avoid the expense of a suit.

Depending on the facts as personally reviewed by an attorney in his area, though, bluedevilphish might find that a simple letter drafted by his attorney to the MoneyLife trademark holder can be enough to prevent a suit. If the registered trademark holder cannot demonstrate any monetary losses or consumer confusion, the company may be as reluctant to initiate any action as bluedevilphish is to have one initiated against him. They will be weighing the costs/benefits in other words, too.

Then again, sometimes, if one has not invested a lot of time, energy or money into a business, it can often make financial sense to simply cede the matter and move on - and in moving on, picking a company identifier that is unique to that company alone, so there will be no future trademark challenge.

Ah but you see...in the case of the company that I worked for we selected a name that absolutely no one else had, trademarked it, and ten years later a European company with a name that really wasn't very likely to be confused with ours, wanted to enter the US market and went after us. So you are wrong that picking a unique name will ensure no trademark challenge in the future.

The similarities in our names were that both of them were derivatives from a latin noun and both started with the same first three letters. The same thing has happen a lot in the tech world as well...and in other industries. Its that whole "deep pockets" thing.

Back in the 90's there was a giant computer store (like the Walmart of computer stores) that is no longer around. I wish to heck I could remember what their name was but I cannot. However it was something pretty ordinary...like computermart or something that ordinary. There were tons of mom and pop shops all over the country with similar names, who had existed long before this large retailer, and they systematically spent millions of dollars...wiping those mom and pop shops out by challenging their trademarks and costing them so much money in legal fees fighting to save their names, that they ended up going out of business.

So again, picking a unique name is NOT guaranteed protection.

 

[quincy]

Ah but you see...in the case of the company that I worked for we selected a name that absolutely no one else had, trademarked it, and ten years later a European company with a name that really wasn't very likely to be confused with ours, wanted to enter the US market and went after us. So you are wrong that picking a unique name will ensure no trademark challenge in the future.

The similarities in our names were that both of them were derivatives from a latin noun and both started with the same first three letters. The same thing has happen a lot in the tech world as well...and in other industries. Its that whole "deep pockets" thing.

Back in the 90's there was a giant computer store (like the Walmart of computer stores) that is no longer around. I wish to heck I could remember what their name was but I cannot. However it was something pretty ordinary...like computermart or something that ordinary. There were tons of mom and pop shops all over the country with similar names, who had existed long before this large retailer, and they systematically spent millions of dollars...wiping those mom and pop shops out by challenging their trademarks and costing them so much money in legal fees fighting to save their names, that they ended up going out of business.

So again, picking a unique name is NOT guaranteed protection.

Ah. Good point. There are rarely guarantees in law.

The risks are LESS if you start off with a name that is unique to your company alone, but having a lot of money is probably the best insurance against infringement claims.

 

[coolmaltese]

Back in the 90's there was a giant computer store (like the Walmart of computer stores) that is no longer around. I wish to heck I could remember what their name was but I cannot. However it was something pretty ordinary...like computermart or something that ordinary. There were tons of mom and pop shops all over the country with similar names, who had existed long before this large retailer, and they systematically spent millions of dollars...wiping those mom and pop shops out by challenging their trademarks and costing them so much money in legal fees fighting to save their names, that they ended up going out of business.

Was the name Computer City? I recall something about trademark issues from trade journals from the 1990 era...

 

[quincy]

Was the name Computer City? I recall something about trademark issues from trade journals from the 1990 era...

LdiJ's description does not quite fit with the history of Computer City. Computer City was sold and then liquidated.

"Computer" is a generic term that can be used by anyone - but I suppose it is possible that infringement notices might have been distributed widely, intimidating smaller businesses to cede their rights in their business names.

 

[LdiJ]

LdiJ's description does not quite fit with the history of Computer City. Computer City was sold and then liquidated.

"Computer" is a generic term that can be used by anyone - but I suppose it is possible that infringement notices might have been distributed widely, intimidating smaller businesses to cede their rights in their business names.

There were not just infringement notices, lawsuits were filed as well. I followed the cases quite avidly at the time...and yes, the case I was remembering was Computer City.

 

[quincy]

There were not just infringement notices, lawsuits were filed as well. I followed the cases quite avidly at the time...and yes, the case I was remembering was Computer City.

Could you please provide some case cites to one or more of these trademark infringement suits, LdiJ? I don't doubt you, but I am interested.

Thank you.

 

[quincy]

There were not just infringement notices, lawsuits were filed as well. I followed the cases quite avidly at the time...and yes, the case I was remembering was Computer City.

Consumer confusion, perhaps?

I think the company you might be thinking of is Circuit City, not Computer City. There is a substantial difference in the types of litigation they were involved in.

As a note, while Computer City was a registered trademark, "computer" was a disclaimed word (unprotectable on its own under trademark law).

 

[LdiJ]

Could you please provide some case cites to one or more of these trademark infringement suits, LdiJ? I don't doubt you, but I am interested.

Thank you.

I don't think that any of them got past the trial court stage, so there wouldn't be any cites that I know of. I know that they sued two mom and pop shops in my city, the media made a big deal about it here, and there were quite a few articles about it going on all over the country.