What is and isn't acceptable to use in a new business name?

[scm123]

ok, so we're looking for a new name for our website. It sells things with a spaced based theme from a popular franchise. The products we sell are licenced products of the franchise (via a 3rd party). So there is no problem with the products we sell, we just want a name that doesn't infringe on anyone's IP (especially the franchises), whiles still being vaguely memorable and space themed.

One suggestion that we liked was "Dark Star". It's kind of memorable, space related and the specific domain we're looking at is available.

But a quick google search reveals that there is a 1974 film called "Dark Star" (no, me either). So does that mean that, because there was once a film called Dark Star that the particular combination of words is now off limits for all time?

Or can we use it if we're using it in a way that is completely unrelated to the film, selling a completely unrelated range of products is that ok? For example if we are selling licenced space themed mugs, from say the BattleStar Galactica franchise, could we call the website "Dark Star Mugs"? Clearly there is no relation between the film and the product we sell, and therefore no attempt to associate ourselves with the film.

Also, in this case, Dark Star is an actual (scientific) thing. Like a gas giant, or supernova, or blackhole. So if someone names a movie after a "thing" that existed before the movie, can the movie "hijack" the word? (Note: Supernova and Blackhole also happen to be films, so does that rule out Blackhole Plumbing? SuperNova Demolitions?)

ps. The above names are just examples to help figure out what is acceptable, obviously "Dark Star Mugs" would be a stupid name. We just want to know if it is ok, or not, or maybe.

[scm123]

ok, thank you for your help in the last 3 posts.

[R0b]

Intellectual property law is complex and continuously evolving so what you are seeking assistance with is likely to go beyond the remit of what this forum can support you with other than general information. If you don't want to pay for some legal advice from a legal expert in this area of law then you should use our assistance as a starting point and carry out your own research to satisfy yourself. Worst case scenario, document everything and keep a paper trail as evidence on the steps you've taken.

Law firms with IP departments will provide an abundance of information through legal articles, free seminars and sometimes free legal advice for startups on certain subject matters. Check their websites to see when they run seminars or advice clinics and get yourself registered, and be prepared when you go but don't expect detailed advice as these types of things are not intended for that. For example, I believe that Browne Jacobson continues to provide a service that lets you call them anytime for advice up to 20 minutes or so and it's free of charge (on the proviso you sign up to their T&Cs and register as a client).

Regarding your question about whether an IP holder can claim ownership to something in a name, title etc. the answer is likely to be yes it is possible subject to the facts. It is possible for IP owners to make a complaint to ICANN to transfer a domain name where it is suspected the owner is a domain name squatter.

Since you are licensed to sell products of a franchise via a third party, it might be wise to check terms of that contract to see if it prohibits you from registering and/or using any names that may be associated or considered as representing the well known franchise?

Whether a domain name is considered to be a breach of trademark or some other law has not yet been fully explored by the courts as such so it is open to arguments, if that's what you are asking.

[Amethyst]

You might find more help on JustAnswer - they have solicitors on there who might be able to help but I'm afraid no one will give you a definitive answer as it depends very much on the word used, meaning attributed, who owns the copyright/trademark ( either reg'd or not) and whether it may be deemed as passing off - there's a few similar queries eg. https://www.justanswer.co.uk/law/7vb...copyright.html - more on the US site .

But check the IPO website https://www.gov.uk/topic/intellectua...ty/trade-marks

[jaguarsuk]

People give out valuable info on the internet all the time. They show off their skills, build a reputation and become the "go to" person. If someone helps you out for free, and displays a strong knowledge of a particular subject, who do you call when you have a problem in that area and are willing to pay for an answer?

Legally qualified people don't generally due to the requirements of their governing bodies regards all matter of things ranging from liability to how they conduct themselves.

Just a bit of constructive criticism before I go, or get booted out - When everyone's footers contain legal disclaimers saying that any advice given is just opinion and not legal advice, it does make it difficult for anyone to tell how knowledgeable they are and therefore useful the advice is. I mean how do you tell the difference between someone who knows nothing about the subject and are giving possibly incorrect advice, and those who are knowledgeable and are giving good advice, but merely have the disclaimer to basically say "this is good advice, but it's free so it comes with no warranties"?

As people with legal knowledge, but no insurance and/or governing body to protect them the disclaimers protect us should someone follow advice, lose through no fault of our advice and then try to blame the us. Majority of this forum is helping people with live cases which can have huge financial consequences to the person posting on here and as people with legal knowledge we would be foolish not to protect our own legal position.

You won't be booted off here, nobody is vindictive here and as rules governing IP are based on copyright, trade mark and trade secrets the answer you have been given possibly isn't the one you want to hear, but it is the correct answer. You need to check whether the name you want to use is trade marked as if it is you could be sued for using it, if it's not you can't.

The law you say you want to be pointed to is the Trade Marks Act 1994, 109 pages... personally I'd check the trade mark registration out (tip: UK, EU & Globally), but happy reading.

[scm123]

https://legalbeagles.info/policies/t...f-website-use/

Well, it seems kind of pointless having a legal forum if no-one on the forum is qualified (or willing) to give anything resembling legal advice. In that case it's more of a "random people giving unqualified personal opinions on legal matters forum".

Well aren't you delightful... here's a tip for you, people with full legal training don't give advice away for free on the internet as it's usually their livelihood.

People give out valuable info on the internet all the time. They show off their skills, build a reputation and become the "go to" person. If someone helps you out for free, and displays a strong knowledge of a particular subject, who do you call when you have a problem in that area and are willing to pay for an answer?

You have actually been told what to do

I don't see any examples of that.

And for the standard of service you seem to require my advice with my "little or no legal training" is that you visit a solicitor and pay for it.

If someone attacks me and I badly injure them, then I'll pay for a solicitor. If I just want to know what the law is on self defence in the UK I'll ask the internet, and hope that someone can tell me or point me at the appropriate legislation (rather than endless comments telling me not to hit people, or just to run away if I'm worried someone's about to attack me).

That's all I needed. Just some general advice on how the law works in this area. Maybe I came across as grumpy, but this was the 2nd "legal" forum I tried, and the first was much worse, so already pretty annoyed by the time I got here. Trying to get an answer is like trying to get blood from a stone. Just endless people giving their opinions on something related to my question but not answering my actual question.

Just seems to have been missed.

Thanks for that, I didn't miss it, and it was a useful answer. It's just that it not really trademarks I was asking about - I know how trademarks work. WHat I needed more clarity on is this vague idea of IP where a company can claim ownership of something because they used a word in a title, named a character in a film, or somebody uttered a recognisable phrase in a movie.

Just a bit of constructive criticism before I go, or get booted out - When everyone's footers contain legal disclaimers saying that any advice given is just opinion and not legal advice, it does make it difficult for anyone to tell how knowledgeable they are and therefore useful the advice is. I mean how do you tell the difference between someone who knows nothing about the subject and are giving possibly incorrect advice, and those who are knowledgeable and are giving good advice, but merely have the disclaimer to basically say "this is good advice, but it's free so it comes with no warranties"?

[Amethyst]

You need to check it is not a trademark ... in this case, it is - https://trademarks.ipo.gov.uk/ipo-tm.../UK00001514147 , although for a Beer so it would be a different class but it depends what you are doing - if you registered it as a trademark it is likely that you may receive a challenge as current owners of the trademark would be notified - there are other trademarks using the words as well in different areas ( clothing, tobacco etc) so have a search through. Also using it as a name when it is a trademark of someone elses could result in action for 'passing off' ( some examples are about the place - this one the claimant failed as it was obviously not passing off, but would have cost them all a lot of time/money to deal with - https://www.rpc.co.uk/perspectives/i...ing-off-claim/ )

That one I have linked to did receive an opposition which was subsequently withdrawn but there are no further details.

Anyway just as an example - based on your made up name .... you can search here https://trademarks.ipo.gov.uk/ipo-tmtext?reset

Just seems to have been missed.

[jaguarsuk]

Because it's not about that particular name, I'm asking about the legal principles,using that as an example, so I can make my own reasoned decision based on what the law says - so I don't have to keep coming back and starting a new thread saying "well what about this name", "ok, what about this name", "or this one" - and then getting a bunch of replies each time, from people often with apparently little or no legal training, saying "yeah, that's probably fine", "just wing it", "if you think it's risky don't do it"... well how am I supposed to know if it's risky if I don't know what the law is...?

Well aren't you delightful... here's a tip for you, people with full legal training don't give advice away for free on the internet as it's usually their livelihood. You have actually been told what to do, but you seem to prefer to ask questions in the hope we'll do it for you. And for the standard of service you seem to require my advice with my "little or no legal training" is that you visit a solicitor and pay for it.

[charitynjw]

https://justbeagle.com/

[charitynjw]

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https://legalbeagles.info/policies/t...f-website-use/

[scm123]

Yeah I get that, but what I'm saying is that if they aren't bothered about them, why would they bother about you?

I mean if you're that worried think of a new name and go with that instead.

Because it's not about that particular name, I'm asking about the legal principles,using that as an example, so I can make my own reasoned decision based on what the law says - so I don't have to keep coming back and starting a new thread saying "well what about this name", "ok, what about this name", "or this one" - and then getting a bunch of replies each time, from people often with apparently little or no legal training, saying "yeah, that's probably fine", "just wing it", "if you think it's risky don't do it"... well how am I supposed to know if it's risky if I don't know what the law is...?

[charitynjw]

Yeah I get that, but what I'm saying is that if they aren't bothered about them, why would they bother about you?

I mean if you're that worried think of a new name and go with that instead.

Of course, there is always that other (not quite) 'defence' to anyone trying to sue me.

I'm potless!


https://www.youtube.com/watch?v=CZWvi0MaIZs

[jaguarsuk]

The point of coming to a legal forum was to legal advice, even if it's just a laymans explanation of what is generally ok and not ok.

Yeah I get that, but what I'm saying is that if they aren't bothered about them, why would they bother about you?

I mean if you're that worried think of a new name and go with that instead.

[charitynjw]

No, but it's not other company names I'm worried about, it's other Intellectual Property - such as names, phrases, quotes, characters etc from movies/books/songs etc.

Imho I reckon the two situations are broadly similar.

It often happens with songwriters that similar tunes are written by different writers (or parts thereof.)
Again, there are only so many notes, chords etc.

(I'm with Eric Morecambe on this one....I play all the right notes.....

....not necessarily in the right order!)

[Amethyst]

You need to check it is not a trademark ... in this case, it is - https://trademarks.ipo.gov.uk/ipo-tm.../UK00001514147 , although for a Beer so it would be a different class but it depends what you are doing - if you registered it as a trademark it is likely that you may receive a challenge as current owners of the trademark would be notified - there are other trademarks using the words as well in different areas ( clothing, tobacco etc) so have a search through. Also using it as a name when it is a trademark of someone elses could result in action for 'passing off' ( some examples are about the place - this one the claimant failed as it was obviously not passing off, but would have cost them all a lot of time/money to deal with - https://www.rpc.co.uk/perspectives/i...ing-off-claim/ )

That one I have linked to did receive an opposition which was subsequently withdrawn but there are no further details.

Anyway just as an example - based on your made up name .... you can search here https://trademarks.ipo.gov.uk/ipo-tmtext?reset