Company name vs same use of phrase

[nascent]

Suppose a company, "XYZ, Inc", provides services they call "American history tours", which is exactly that: tours about American history.

Now there's a company named "American History Tours, Inc". Can this company claim all usages of the phrase "American history tour" and "American history tours" as a description of services provided by "XYZ, Inc" are infringing? If so, with what limitations and what amount of variation is necessary to avoid infringement, ex is "American historical tours" or "tours of American history" sufficiently different? Does capitalization matter? For example as a headline the phrase would appear as "American History Tours" but otherwise would appear as simply "American history tour". What about a partial match, like "American history" or "history tour"?

 

[adjusterjack]

Suppose a company, "XYZ, Inc", provides services they call "American history tours", which is exactly that: tours about American history.

Now there's a company named "American History Tours, Inc". Can this company claim all usages of the phrase "American history tour" and "American history tours" as a description of services provided by "XYZ, Inc" are infringing? If so, with what limitations and what amount of variation is necessary to avoid infringement, ex is "American historical tours" or "tours of American history" sufficiently different? Does capitalization matter? For example as a headline the phrase would appear as "American History Tours" but otherwise would appear as simply "American history tour". What about a partial match, like "American history" or "history tour"?

Probably too generic for an infringement claim to hold up.

 

[quincy]

Suppose a company, "XYZ, Inc", provides services they call "American history tours", which is exactly that: tours about American history.

Now there's a company named "American History Tours, Inc". Can this company claim all usages of the phrase "American history tour" and "American history tours" as a description of services provided by "XYZ, Inc" are infringing? If so, with what limitations and what amount of variation is necessary to avoid infringement, ex is "American historical tours" or "tours of American history" sufficiently different? Does capitalization matter? For example as a headline the phrase would appear as "American History Tours" but otherwise would appear as simply "American history tour". What about a partial match, like "American history" or "history tour"?

What is the name of your state, nascent, or, if not in the US, what is the name of your country?

The words American and History and Tour are all generic words that anyone can use descriptively in the same way that anyone can use the generic words Kentucky and Fried and Chicken. Generic words cannot be protected from use by others and they cannot on their own function as trademarks.

That said, the words Kentucky Fried Chicken combined have achieved a secondary meaning in the marketplace, the words together recognized by consumers as identifying a particular company and its products. Kentucky Fried Chicken can prevent others from using their recognized KFC name as an identifier (trademark) for another fried chicken company or product. But another company from Kentucky can say they sell fried chicken or their fried chicken is made in Kentucky.

Like Kentucky Fried Chicken, a company named American History Tours, Inc. could prevent others from calling a similar tour an American History Tour. If consumers connect the combination of these words with a specific tour company, the specific tour company can prevent others from using the name American History Tours. They cannot prevent others from saying they are presenting a tour of American historical sites.

Facts matter in law. Without the specific names and a review of all facts, there is no way to tell if one name infringes on another.

Does that answer your question?

 

[nascent]

What is the name of your state, nascent, or, if not in the US, what is the name of your country?

Maryland.

Facts matter in law. Without the specific names and a review of all facts, there is no way to tell if one name infringes on another.

Understood, still your answer was very helpful!

If I can try to dig a little deeper, understanding that without specifics this may not really be answerable: given that "American History Tours" as a name can be protected, does it at all include similar names like "American heritage tours" or "American historical tours" or "American history outings"? What about re-arranging the words, like "tours of American history" or "American tours of history" or "history tours in America"? If these can be protected, what kind of guide would you have to know whether a variation would be protected or not?

Thanks for your helpful advice!

 

[adjusterjack]

what kind of guide would you have to know whether a variation would be protected or not?

There is no guide.

If you are that confused over what to name your business you either

a - Consult an intellectual property attorney

or

b - Think up a more original and unique name.

 

[nascent]

If you are that confused over what to name your business you either

My question has nothing to do with what to name a business, rather what words can be used to describe a service when a business exists with those (generic) words as their name. No conflict of business name is in question. Sorry if my last question was not clear about this.

 

[quincy]

Maryland.



Understood, still your answer was very helpful!

If I can try to dig a little deeper, understanding that without specifics this may not really be answerable: given that "American History Tours" as a name can be protected, does it at all include similar names like "American heritage tours" or "American historical tours" or "American history outings"? What about re-arranging the words, like "tours of American history" or "American tours of history" or "history tours in America"? If these can be protected, what kind of guide would you have to know whether a variation would be protected or not?

Thanks for your helpful advice!

If your words are used in a way that confuses consumers into thinking your product or service is that of another's, or that your product or service is endorsed or sponsored by or affiliated with another, then the holder of the trademark with the words you are using could have an infringement action to pursue against you.

I gave an example of Kentucky Fried Chicken, which is a protected trademark that is made up of three generic words. The three words on their own can be used by anyone but not in a way that confuses consumers as to the origin of the chicken. You cannot state or imply your chicken is Kentucky Fried Chicken. You cannot trade off the reputation of the KFC brand.

Using Kentucky or fried or chicken as a way to describe a product, on the other hand, is a fair use of the words either singly or in combination. You are not infringing by saying chicken comes from Kentucky or the chicken is fried chicken from Kentucky.

Here is a link to 15 US Code section 1115 in the Lanham Act that speaks to fair use: https://www.law.cornell.edu/uscode/text/15/1115

 

[nascent]

Thank you, Quincy, this answers my question.

 

[quincy]

Thank you, Quincy, this answers my question.

You're welcome, nascent. I am glad I was able to answer your question - although it can be important to have the specifics looked at by an IP professional in your area to better ensure you are not at risk of infringing on anyone else's rights.

And thank you for the thanks. They are appreciated.