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Thomas Swartz
Thomas Swartz, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3175
Experience:  Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
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We need to know if we have the legal right to use the name

Customer Question

We need to know if we have the legal right to use the name we're using for our forum/website.
Submitted: 11 months ago.
Category: Intellectual Property Law
Customer: replied 11 months ago.
We've had the domain "shopifystorepro(.)com for over a year. We launched a video training course teaching people how to use their platform to run a successful business. They did ask us to change our logo which we did but never said anything about the name. We now just started a new forum about Shopify called "shopifyers(.)com." Just based on our research we felt we had every right to use it considering there's no confusion. It's a forum about Shopify. Our affiliate manager at Shopify reached out and said their legal dept might come knowing and make us change the name. Can they do that? Can their TOS supercede trademark infringement law?
Expert:  Thomas Swartz replied 11 months ago.

Hello JACUSTOMER,

A Terms of Service Agreement can supersede trademark law. A Terms of Service Agreement is a type of contract between two parties. In contract law, parties are free to agree to any terms between them as they see fit. So, if you are using the Shopify platform and you signed a TOS agreement, and that agreement provides anything about using the "Shopify" name then you would be bound by the TOS agreement.

Additionally, it is likely that Shopify has a trademark on that name for websites, website applications, etc. And your name of "shopifyers.com is very similar to their name such that it is likely to cause confusion as to just who is operating which website. The test under trademark infringement is whether there is a likelihood of consumer confusion.

So, I am sorry to say that in both areas: (1) the TOS Agreement and (2) trademark infringement, you are not in a very strong legal position.

Thomas

Customer: replied 11 months ago.
Thank you Thomas! We haven't signed anything and haven't agreed to their TOS if that makes any different. What about the fact the forum is free and is not "in connection with a good or service," or the news reporting and news commentary defense? Do we have any defense?
Expert:  Thomas Swartz replied 11 months ago.

It does make a difference that you did not sign a TOS agreement. You are obviously not bound by something you did not sign.

It does not matter that your site is free. The fact that your site is free would only potentially affect the amount of damages they could receive from you. They could still seek an injunction preventing you from using the name, attorney's fees for the litigation, and possible "dilution" of trademark damages.

The defenses of your site not being "in connection with a good or service" or the news reporting/commentary defense are possible defenses. If your site is only directed to critical commentary or tips on how to use the Shopify site, then you probably have a decent defense. But the courts have pretty wide interpretations of these defenses, and so the question you have to ask yourself is whether if Shopify really wants you to stop using the name whether or not you want to go through the time and expense of a trademark lawsuit. That being said, if Shopify asks you to change your name, I would seriously consider changing it to something they would not object to.

Thomas