Question about

[max_z]

Hello, my name is Max. I live in the state of Maryland. I purchased a domain name from HostGator called theseducejuice.com about a year and a half ago. It's a dating attraction blog. I'm just finding out that a similar site called seducejuice.com (without "the") is registered as well. It's a womens' fragrance and oil site. Am I at risk here since the two site names are similar? Should I look to get my site trademarked/copyrighted? And where should I go to make this happen at a reasonable price, if so? An attorney or a website?

Thank You

 

[FlyingRon]

Names (including site and business names) can not be protected by copyright. By using your "brand" in commerce, you already have trademark rights. You could register the rights if you wish. Registration is relatively straightforward (see the FAQ on www.uspto.gov) if you choose to go that route. What are your concerns? Just because you have two businesses involved in different lines, doesn't mean there is an infringement.

 

[quincy]

Hello, my name is Max. I live in the state of Maryland. I purchased a domain name from HostGator called theseducejuice.com about a year and a half ago. It's a dating attraction blog. I'm just finding out that a similar site called seducejuice.com (without "the") is registered as well. It's a womens' fragrance and oil site. Am I at risk here since the two site names are similar? Should I look to get my site trademarked/copyrighted? And where should I go to make this happen at a reasonable price, if so? An attorney or a website?

Thank You

A name chosen to identify a company and its products and services can be registered with the US Patent and Trademark Office but registration is not necessary to gain trademark rights in the name. These rights are gained through the use of the name and, in the US, it will be the first to use the name in commerce, and not the first to register the name, who will be considered the owner of the mark. In other countries, it is registration of a trademark that confers rights.

The purpose of having a trademark is so consumers can identify one product or service from that of all others. If a consumer is looking specifically for "seduce juice" women's fragrances and gets directed to your site instead, the seduce juice women's fragrance business could see that as a problem.

If the first user of a name sees a second user's use of the same or similar name as infringing on their rights, this can lead to the initiation of a lawsuit.

Do you know how long the fragrance site has been using the name? Did they use it before you? Has there been any indication of consumer confusion? Have you received any notice from the fragrance company over your use of the same name?

As a note, the word "the" added or subtracted from a trademark is not going to be enough of a change in a mark to make an infringing use not infringing.

 

[max_z]

A name chosen to identify a company and its products and services can be registered with the US Patent and Trademark Office but registration is not necessary to gain trademark rights in the name. These rights are gained through the use of the name and, in the US, it will be the first to use the name in commerce, and not the first to register the name, who will be considered the owner of the mark. In other countries, it is registration of a trademark that confers rights.

The purpose of having a trademark is so consumers can identify one product or service from that of all others. If a consumer is looking specifically for "seduce juice" women's fragrances and gets directed to your site instead, the seduce juice women's fragrance business could see that as a problem.

If the first user of a name sees a second user's use of the same or similar name as infringing on their rights, this can lead to the initiation of a lawsuit.

Do you know how long the fragrance site has been using the name? Did they use it before you? Has there been any indication of consumer confusion? Have you received any notice from the fragrance company over your use of the same name?

As a note, the word "the" added or subtracted from a trademark is not going to be enough of a change in a mark to make an infringing use not infringing.

Thank you so much for the detailed response, Quincy. Yes, the fragrance site has been in operation since 2012. My site wasn't officially up until late 2015, so the name was used first by them. As as far I'm aware, there hasn't been any indication of consumer confusion. How could I find out, if that's the case?

I haven't received any notices from the fragrance company over using the same name. Should I just reach out to them, just to see?

The word "the" added or subtracted from a trademark is not going to be enough of a change in a mark to make an infringing use not infringing.

So you're saying that it's infringing with or without the word "The." I'm kinda confused.

Max

 

[quincy]

Thank you so much for the detailed response, Quincy. Yes, the fragrance site has been in operation since 2012. My site wasn't officially up until late 2015, so the name was used first by them. As as far I'm aware, there hasn't been any indication of consumer confusion. How could I find out, if that's the case?

I haven't received any notices from the fragrance company over using the same name. Should I just reach out to them, just to see?

The word "the" added or subtracted from a trademark is not going to be enough of a change in a mark to make an infringing use not infringing.

So you're saying that it's infringing with or without the word "The." I'm kinda confused.

Max

I can't tell you if your use of the same name as the fragrance company will cause you any legal grief. I can see how it could if the fragrance company uses it website to attract customers and generate sales. Your domain name could direct traffic from their site to yours and, if the fragrance company sees this as a problem, it could become your problem, too.

A domain name on its own does not create trademark rights but when a trademark is part of a domain name, the owner of the trademark can prevent another from using that domain name.

You should be notified by the fragrance company if they believe you are stepping on their rights. Sometimes this notification will come in the form of a cease and desist letter. Other times there will be a domain name challenge. And occasionally a company will just file an infringement suit and that will be your first notice that a company is not pleased with your use of their name as an identifier for your goods or services.

You can have the facts of your use personally reviewed and compared to the other company and the facts of the name's use to identify their products. This review is best done by an IP professional in your area. I would not contact the fragrance company before you have this review.

Good luck.

 

[max_z]

I can't tell you if your use of the same name as the fragrance company will cause you any legal grief. I can see how it could if the fragrance company uses it website to attract customers and generate sales. Your domain name could direct traffic from their site to yours and, if the fragrance company sees this as a problem, it could become your problem, too.

A domain name on its own does not create trademark rights but when a trademark is part of a domain name, the owner of the trademark can prevent another from using that domain name.

You should be notified by the fragrance company if they believe you are stepping on their rights. Sometimes this notification will come in the form of a cease and desist letter. Other times there will be a domain name challenge. And occasionally a company will just file an infringement suit and that will be your first notice that a company is not pleased with your use of their name as an identifier for your goods or services.

You can have the facts of your use personally reviewed and compared to the other company and the facts of the name's use to identify their products. This review is best done by an IP professional in your area. I would not contact the fragrance company before you have this review.

Good luck.

Wow.. gotcha, seems like a lot of legwork. Think I'm just going to save myself the headache and change my domain name right now. Could you lend me some tips to ensure that this doesn't happen to me again? (for starters, maybe typing a domain name in Google with quotation marks to see if it's in use)

Thanks

 

[quincy]

Wow.. gotcha, seems like a lot of legwork. Think I'm just going to save myself the headache and change my domain name right now. Could you lend me some tips to ensure that this doesn't happen to me again? (for starters, maybe typing a domain name in Google with quotation marks to see if it's in use)

Thanks

If you create your own name (invent a word, combine two unrelated words), you avoid a lot of problems. Otherwise, you need to conduct a thorough search for both registered names and unregistered names. There are no real short cuts if you want to ensure the name you want is not already in use by another.

 

[max_z]

If you create your own name (invent a word, combine two unrelated words), you avoid a lot of problems. Otherwise, you need to conduct a thorough search for both registered names and unregistered names. There are no real short cuts if you want to ensure the name you want is not already in use by another.

Ok and one last thing... when you said this:

In the U.S, the first to use the name in commerce, and not the first to register the name, will be considered the owner of the mark.

I actually don't own any products or services of my own on my Seduce Juice site. It's just an affiliate site that promotes dating/attraction informational products from numerous vendors.

So... would this count as using the name in "commerce" when one of the information products is sold through my link? Or would using the name in commerce ONLY apply if I actually created and sold a Seduce Juice romance course on my site, for example?

Many Thanks,
Max

 

[quincy]

Ok and one last thing... when you said this:

In the U.S, the first to use the name in commerce, and not the first to register the name, will be considered the owner of the mark.

I actually don't own any products or services of my own on my Seduce Juice site. It's just an affiliate site that promotes dating/attraction informational products from numerous vendors.

So... would this count as using the name in "commerce" when one of the information products is sold through my link? Or would using the name in commerce ONLY apply if I actually created and sold a Seduce Juice romance course on my site, for example?

Many Thanks,
Max

Yours would be considered a commercial site. As such, it could potentially be seen as infringing on the rights of the fragrance company. You could be seen as trading off the name of the older, more established company's trademark as a way to direct more traffic to your site, while at the same time directing traffic away from the fragrance company.

The more traffic to your site, the more the dating companies will want to use your site to promote theirs and this benefits you but can come at a cost to the fragrance company.

In addition, not only could the fragrance company lose customers by having customers redirected, consumer confusion could be generated by your use of the same name. Consumers could believe you are connected to the fragrance company or endorsed or sponsored by the fragrance company ... and the fragrance company may not want it's fragrances connected with your dating business promotions.

So there are a few issues here that could cause you a problem if the fragrance company decides they want to protect their trademark rights and take action against you. Trademark holders are responsible for enforcing their own rights - and lack of enforcement can lose them all of their rights to their trademark.

Whether the fragrance company will or not take any action is a question mark. Whether any action they take could be successful for them is a question mark. It would take greater research into Seduce Juice to determine this better. You can find an IP attorney in your area to personally review the facts.

Good luck.

 

[max_z]

Yours would be considered a commercial site. As such, it could potentially be seen as infringing on the rights of the fragrance company. You could be seen as trading off the name of the older, more established company's trademark as a way to direct more traffic to your site, while at the same time directing traffic away from the fragrance company.

The more traffic to your site, the more the dating companies will want to use your site to promote theirs and this benefits you but can come at a cost to the fragrance company.

In addition, not only could the fragrance company lose customers by having customers redirected, consumer confusion could be generated by your use of the same name. Consumers could believe you are connected to the fragrance company or endorsed or sponsored by the fragrance company ... and the fragrance company may not want it's fragrances connected with your dating business promotions.

So there are a few issues here that could cause you a problem if the fragrance company decides they want to protect their trademark rights and take action against you. Trademark holders are responsible for enforcing their own rights - and lack of enforcement can lose them all of their rights to their trademark.

Whether the fragrance company will or not take any action is a question mark. Whether any action they take could be successful for them is a question mark. It would take greater research into Seduce Juice to determine this better. You can find an IP attorney in your area to personally review the facts.

Good luck.

Hey Quincy, I'm back again. So I kinda went against your advice and notified the fragrance company. Here's what I got back:

Hello Max,

Appreciate you reaching out in regard to your domain's similarity to ours. I understand the concern, and also the difference between the names.

To address the trademark, we have a fully issued Trademark on Seduce Juice name and mark within the bounds of electronic cigarette liquids and accessories. Looks as if you already know the rules surrounding this and that we are indeed in totally different industries.

While I have no interest in blocking or impeding you from doing business under this name, I fully agree that the identity and domains are so similar that there are going to be issues. People searching for anything less than the precise name may be directed to the wrong place.

Given that we have been pushing this name and marketing it for so long I think it may seriously stifle your site from gaining traction. While I can't demand you change your name, I would if I were you simply for the sake of having a "clear path" in search indexes.

While I have you, I'd like to seize the opportunity to assimilate this domain from you should you decide to abandon it. I could offer a nominal fee to cover your reasonable registration costs and time as a gesture of good faith and thanks for bringing it to my attention. Straight away I would propose $200 for transfer of the domain to us.



You were totally right. But what does "proposing $200 for transfer of the domain to us" mean? Does that mean I'll be given $200 if I transfer my domain over to them or do I owe them $200 for stepping on their toes? I'm confused, never dealt with anything like this before. Sorry if this comes off as a dumb question.

You've been truly helpful in this matter.

-Max

 

[quincy]

Hey Quincy, I'm back again. So I kinda went against your advice and notified the fragrance company. Here's what I got back:

Hello Max,

Appreciate you reaching out in regard to your domain's similarity to ours. I understand the concern, and also the difference between the names.

To address the trademark, we have a fully issued Trademark on Seduce Juice name and mark within the bounds of electronic cigarette liquids and accessories. Looks as if you already know the rules surrounding this and that we are indeed in totally different industries.

While I have no interest in blocking or impeding you from doing business under this name, I fully agree that the identity and domains are so similar that there are going to be issues. People searching for anything less than the precise name may be directed to the wrong place.

Given that we have been pushing this name and marketing it for so long I think it may seriously stifle your site from gaining traction. While I can't demand you change your name, I would if I were you simply for the sake of having a "clear path" in search indexes.

While I have you, I'd like to seize the opportunity to assimilate this domain from you should you decide to abandon it. I could offer a nominal fee to cover your reasonable registration costs and time as a gesture of good faith and thanks for bringing it to my attention. Straight away I would propose $200 for transfer of the domain to us.



You were totally right. But what does "proposing $200 for transfer of the domain to us" mean? Does that mean I'll be given $200 if I transfer my domain over to them or do I owe them $200 for stepping on their toes? I'm confused, never dealt with anything like this before. Sorry if this comes off as a dumb question.

You've been truly helpful in this matter.

-Max

It appears that the fragrance company wants to purchase your domain name from you. I think the company could get the domain name from you through a domain name dispute anyway so their offer to purchase it from you is nice

Good luck.

 

[max_z]

It appears that the fragrance company wants to purchase your domain name from you. I think the company could get the domain name from you through a domain name dispute anyway so their offer to purchase it from you is nice

Good luck.

Yeah, that's what I thought. Nice indeed, a serious case of luck. How's that for a happy ending?

Thanks a million, Quincy!

 

[quincy]

Yeah, that's what I thought. Nice indeed, a serious case of luck. How's that for a happy ending?

Thanks a million, Quincy!

You're welcome, Max. And thanks for the thanks.

Good luck with your promotional site.