Legal Question in Intellectual Property in Virginia

My question is about the naming of a business.

A few months ago I registered the domain www.balancedbudgeter.com with the intent of starting a personal finance website. The name of the website is The Balanced Budgeter.

These websites make money from advertisements and product recommendations. I'm still in the process of building the site and there currently isn't any content on it.

I just recently realized there's another personal finance website with a somewhat similar name, The Balance (www.thebalance.com). I checked and The Balance is trademarked.

Do you think the name of my website is sufficiently different from The Balance to not run into any legal issues. I really don't want to be sued over this. The Balance is owned by a large company, Dotdash.

I've noticed there are many personal finance websites with similar names. Many of these websites use similar words in their names like dollar, money, thrifty, cents, etc.

One example is Millennial Money Man and My Millennial Guide, both of which are personal finance websites.

I've put several months into building this website part-time and don't want to change the name unless I absolutely have to.

Thank you for your legal opinions on this matter.


Asked on 2/08/19, 7:48 am

1 Answer from Attorneys

Frank Natoli Natoli-Legal, LLC

Both names wax descriptively, which is not really a good characteristic for a trademark, but the root "balance" is used ad nauseum to describe many goods and services so that saturation is to your benefit but we never know how another party might respond. Putting the URL aside, if you are trying to brand a product or service then you really need to have a proper clearance done before making any investment.

Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the VA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.

If you need more clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.

Our firm is now referred by the American Bar Association (see under the New York section): http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html

Kind regards,

Frank

www.LanternLegal.com

866-871-8655

frank@lanternlegal.com

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Answered on 2/08/19, 7:59 am


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