Anyone knowledgeable with Trademark/Copyright law?

bWize · Jul 29, 2014

Apologies if this is a bit of a random post but wondering if any of the fine folk on NSC have experience with Trademark/Copyright law? I have tried doing a lot of online research on this but hard to get a definitive answer...

Basically I have just setup an online web business and one of the online stores sells loom bands (current craze with kids). The name I want to use for my main domain name/store name contain the words "Rainbow". My concern is that "Rainbow Loom" was trademarked back in 2010 and the product is related to what I'm selling. http://en.wikipedia.org/wiki/Rainbow_Loom

My question is can I use the word "Rainbow" in my domain name or does the guy who trademarked "Rainbow Looms" have general ownership of "Rainbow" within the loom band sales industry? Can I get sued for infringement?

Cheers for help!

Goldstone1976 · Jul 29, 2014

Arundel_Seagull said:
Apologies if this is a bit of a random post but wondering if any of the fine folk on NSC have experience with Trademark/Copyright law? I have tried doing a lot of online research on this but hard to get a definitive answer...

Basically I have just setup an online web business and one of the online stores sells loom bands (current craze with kids). The name I want to use for my main domain name/store name contain the words "Rainbow". My concern is that "Rainbow Loom" was trademarked back in 2010 and the product is related to what I'm selling. http://en.wikipedia.org/wiki/Rainbow_Loom

My question is can I use the word "Rainbow" in my domain name or does the guy who trademarked "Rainbow Looms" have general ownership of "Rainbow" within the loom band sales industry? Can I get sued for infringement?

Cheers for help!

Generally, it is not possible to TM a word in common usage, such as "Rainbow". However, the issue you need to be careful of is "passing off", ie using the IP that someone else owns in order to generate commercial benefit for yourself.

The questions a Judge would ask themselves in determining whether your domain name was passing off include "why did he want the word 'rainbow' in his domain name?" and "Just how closely 'related' are his products to Rainbow Looms and what proportion of his total commercial gain (perhaps revenue or GM) is derived from those products?"

If the answers are "it's a total coincidence" and "very little", you're much more likely to be ok than "it's completely deliberate" and "a lot".

Remember that any case would be decided on the balance of probabilities (it's a civil issue).

Disclaimer: I'm not a lawyer, but have sued and been sued in TM- related cases.

EDIT: I'm not at all surprised you can't find a definitive answer using Google. No-one can provide you with one on the data you've provided. Even an IP Lawyer, armed with all the info they could possibly want about your specific case would only be able to give you a probability, not a certainty. The only way to be safe is not to use the word "Rainbow"; but you knew that...

Triggaaar · Jul 29, 2014

Goldstone1976 said:
Disclaimer: I'm not a lawyer, but have sued and been sued in TM- related cases.

Lucky boy.

I agree with Goldstone, and would add that it's not just about your chances of winning a case, but the fact you wouldn't want to get sued in the first place.

If your place is called RainbowStores and you sell tons of stuff, including some loom bands (I made a wicked panda with them this evening), I'd think it's unlikely they'll be chasing you. But if it's a significant part of your business, I'd think it's an issue, and why did you come up with the name RainbowStores?

bWize · Jul 29, 2014

Goldstone1976 said:
Generally, it is not possible to TM a word in common usage, such as "Rainbow". However, the issue you need to be careful of is "passing off", ie using the IP that someone else owns in order to generate commercial benefit for yourself.

The questions a Judge would ask themselves in determining whether your domain name was passing off include "why did he want the word 'rainbow' in his domain name?" and "Just how closely 'related' are his products to Rainbow Looms and what proportion of his total commercial gain (perhaps revenue or GM) is derived from those products?"

If the answers are "it's a total coincidence" and "very little", you're much more likely to be ok than "it's completely deliberate" and "a lot".

Remember that any case would be decided on the balance of probabilities (it's a civil issue).

Disclaimer: I'm not a lawyer, but have sued and been sued in TM- related cases.

EDIT: I'm not at all surprised you can't find a definitive answer using Google. No-one can provide you with one on the data you've provided. Even an IP Lawyer, armed with all the info they could possibly want about your specific case would only be able to give you a probability, not a certainty. The only way to be safe is not to use the word "Rainbow"; but you knew that...

Thanks for the reply Goldstone. I wanted to include the word rainbow in the domain name for SEO purposes as it's included in high amount of keyword searches related to the loom bands, as a lot of people search for the "Rainbow Looms". I only want to sell the loom bands, kits and accessories (bought through wholesale supplier) and play on the fact you can make rainbow colours from the individual bands and accessories to justify the name. I don't really feel I would be in direct competition of the "Rainbow Loom" itself.

Nibble · Jul 29, 2014

Look up the principle of "the man on the Clapham Omnibus ". Principle still stands today.

Goldstone1976 · Jul 29, 2014

Arundel_Seagull said:
Thanks for the reply Goldstone. I wanted to include the word rainbow in the domain name for SEO purposes as it's included in high amount of keyword searches related to the loom bands, as a lot of people search for the "Rainbow Looms". I only want to sell the loom bands, kits and accessories (bought through wholesale supplier) and play on the fact you can make rainbow colours from the individual bands and accessories to justify the name. I don't really feel I would be in direct competition of the "Rainbow Loom" itself.

Ok, so the answers to the two questions I said a Judge would ask are "It's deliberate" and "a lot". That puts you into dangerous territory. Trig is right to say that you don't want the hassle of getting sued, irrespective of whether you win or not - it's extremely time consuming; much more so than you could ever believe!

IMO, you have 4 options:

1) go for it and pray.
2) choose another name and possibly lose revenue
3) enter negotiations with rainbow loom to see if they'll give you a licence. They may say "no"; they'd definitely want some £; you would have alerted them to the issue so they'll watch you.
4) get some professional advice before deciding.

Only you can choose. Fwiw, I'd choose 4. :shrug:

good luck!

Triggaaar · Jul 29, 2014

Arundel_Seagull said:
I wanted to include the word rainbow in the domain name for SEO purposes as it's included in high amount of keyword searches related to the loom bands, as a lot of people search for the "Rainbow Looms". I only want to sell the loom bands, kits and accessories

Mmm.

and play on the fact you can make rainbow colours from the individual bands and accessories to justify the name. I don't really feel I would be in direct competition of the "Rainbow Loom" itself.

Are you going to be selling any bands or looms made by companies other than Rainbow Loom? If so, then you are in direct competition with them.

It sounds dodgy to me. The only reason you want to use the name Rainbow is because of the company Rainbow Loom.

Looking at Goldstone's point:
"The questions a Judge would ask themselves in determining whether your domain name was passing off include "why did he want the word 'rainbow' in his domain name?" and "Just how closely 'related' are his products to Rainbow Looms and what proportion of his total commercial gain (perhaps revenue or GM) is derived from those products?"

The answer = "it's completely deliberate" and "a lot".

Triggaaar · Jul 29, 2014

Goldstone1976 said:
IMO, you have 4 options:

1) go for it and pray.
2) choose another name and possibly lose revenue
3) enter negotiations with rainbow loom to see if they'll give you a licence. They may say "no"; they'd definitely want some £; you would have alerted them to the issue so they'll watch you.
4) get some professional advice before deciding.

Only you can choose. Fwiw, I'd choose 4. good luck!

It depends how big the company is, and what the likely revenue will be. If it's decent, then I agree, 4 is the sensible option. If it's much smaller, I'd for for option 2, and since you're only doing it for SEO purposes, I'd think you can work on your SEO in other ways. For example, I don't think they have the sole right to use the word Loom, in connection with bands.

Goldstone1976 · Jul 29, 2014

Triggaaar said:
It depends how big the company is, and what the likely revenue will be. If it's decent, then I agree, 4 is the sensible option. If it's much smaller, I'd for for option 2, and since you're only doing it for SEO purposes, I'd think you can work on your SEO in other ways. For example, I don't think they the sole right to the word Loom, in connection with bands.

Yes, this is sound advice too. I have a habit of forgetting that most people deal with substantially smaller businesses than those I have generally tangled with...

bWize · Jul 29, 2014

It's a bit confusing they could claim the word "Rainbow" yet both Pepsi-cola and Coco-cola can both have the word "cola" in their main names and are in direct competition. I could understand if the company was called "Rainbow" and they had trademarked the word itself, but rainbow is quite a generic word which could easily be applied when working with rubber bands of different colours.

Triggaaar · Jul 29, 2014

Arundel_Seagull said:
It's a bit confusing they could claim the word "Rainbow" yet both Pepsi-cola and Coco-cola can both have the word "cola" in their main names and are in direct competition.

That's because neither Pepsi or Coca-Cola came up with the term 'cola' for a drink, so neither could claim it. In terms of Loom bands, the name Rainbow probably wasn't used until the company used it.

I could understand if the company was called "Rainbow" and they had trademarked the word itself

They couldn't stop anyone ever using the word Rainbow, because it's a common word already used by all.

but rainbow is quite a generic word which could easily be applied when working with rubber bands of different colours.

And I believe you can use it. You can sell your bands and even call some packs 'Black', others 'White', and others 'Rainbow colours'. But using the name as the name of your company is different. It's not like you won't sell black or white bands.

Lush · Jul 29, 2014

Basically you're piggybacking on an existing brand to make a profit yourself and take revenue away from them.

Why not come up with your own idea? What about Sunshine Looms?

(BTW if this is a massive success I now have written dated evidence that I gave you this idea on NSC).

gripper stebson · Jul 29, 2014

Lush said:
Basically you're piggybacking on an existing brand to make a profit yourself and take revenue away from them.

Why not come up with your own idea? What about Sunshine Looms?

(BTW if this is a massive success I now have written dated evidence that I gave you this idea on NSC).

Good shout.

I wonder what the law is concerning using 'Sunshine' and then filling your SEO keywords and metadata with the word 'rainbow'?

bWize · Jul 29, 2014

Lush said:
Why not come up with your own idea? What about Sunshine Looms?

(BTW if this is a massive success I now have written dated evidence that I gave you this idea on NSC).

http://www.walmart.com/ip/Sunshine-Loom-Craft-Kit/32107029 :lolol:

I take your point though. I decided to keep well away from known names and create a completly unique name to save any possible bother.

Thanks for the responses :thumbsup:

Goldstone1976 · Jul 29, 2014

Arundel_Seagull said:
http://www.walmart.com/ip/Sunshine-Loom-Craft-Kit/32107029

I take your point though. I decided to keep well away from known names and create a completly unique name to save any possible bother.

Thanks for the responses

Probably wise - at least you'll not have to worry about a solicitor's letter :thumbsup:

very best of luck with your business!

dejavuatbtn · Jul 29, 2014

gripper stebson said:
Good shout.

I wonder what the law is concerning using 'Sunshine' and then filling your SEO keywords and metadata with the word 'rainbow'?

Sunshine Desserts may have something to say about that. Didn't get where I am today knowing nothing about TM legislation.

symyjym · Jul 29, 2014

Arundel_Seagull said:
http://www.walmart.com/ip/Sunshine-Loom-Craft-Kit/32107029

I take your point though. I decided to keep well away from known names and create a completly unique name to save any possible bother.

Thanks for the responses

Copying someones name is asking for trouble. Even if it is not Trade Marked, Interlectual Property will protect them.

You just need to be creative and think of something else like Prism Looms or something.

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