Using RL company name for a store

Hello,

I am curious to know if you are allowed to use a real world company name that sells exactly the same items you do in-world -for example: Bed, Bath & Beyond...and you sell bathroom/Bedroom things, or MACY's, and you sell clothing etc.

Maybe the answer is obvious, but does anyone have the actual documentation where it says we are permitted/not permitted to do that?

Thanks!

<3

Vanya

sounds like trademark/copyright infringement to me. i'd get your lawyers ready.

If you own the store then I don't see any problem with it. However, if you start calling your shop after big brand RL names, that is when you start to run into copyright issues.

Unless you have permission from the owner of the RL shop I wouldn't recommend naming your store after it or associating your store with the RL one. It may just turn around and bite you.

That's obvious trademark infringement. There are RL laws governing it but you will have to look them up yourself.

Just as I know that it is against the law to steal a shirt from a department store but I can't cite the actual statute, this is much the same. I *guarantee* there is a law against using another company's trademark to sell your own stuff.

right....so should store/business owners on secondlife do a quick search on the internet to see if the name of the store they wish to call their own already exists in the real world?

It's really kind of common sense. The fact that a hamburger shop that I've never heard of or seen in Newark is named Katie's doesn't mean I can't run a tee shirt shop in SL called Katie's. But Macy's? No. I can't start a Macy's. If, on the other hand, there turns out to be a national chain of tee shirt shops named Katie's, they are perfectly within their rights to ask me to cease and desist using the name.

Are you concerned that an original idea that you have which has nothing to do with everything in the real world might possibly have a real world analog somewhere else that you don't know about? Well, you can google it, but for the most part don't worry.

But are you trying to take the name of a real life store for your store in SL? Then you can't do that.

And yes, people steal real world trademarks and copyrights all the time in Second Life, but they are in violation of the law. So if you're asking if it's ok, it's not. The fact that you might get away with it doesn't mean that it's ok.

i wouldn't. but why not take a name you really like, and twist it just enough that it reflects "you" but still has the familiar ring to it. let us know wut you choose.

I know somebody who was making armani clothes in sl based on the original armani cloths and she used the name armani in her classifieds adds.

She has been contacted by a lawyer of armani to remove everything in her shop.

I think there's some fair-use (if that's the right term) bits to this too..

For Bed, Bath & Beyond: no. Can't use their name because their lawyers will become grumpy.

If you wanted to, for example, name your skin store Macy's because your name was Macy and you weren't trying to make yourself look like the RL Macy's, that would probably be ok.

The problem is, if you don't actively defend your brand or trademark you eventually lose the legal right to use it exclusively - it's considered "abandoned." It happens: "Aspirin" was once a brand name. So big names like Macy's and Armani are obliged to look for such violations and go after at least some of them to retain their extremely valuable marks. In fact, they like to pick on really trivial violations, like say an SL shop, because it is more cost-effective: No-one is going to go to court to fight them over that, so they get to establish they are defending their mark for little more than the time it takes to use the SL Search function and the cost of postage for the cease-and-desist letter. Expect to hear from RL lawyers if you use well-known names in SL. And yes, they will take you to RL court if you don't cease and desist.

Actually I noticed that there was a store on SL that was named exactly the same name as a RL company that I know that selling exactly the same type of product. I am pretty sure they are not affiliated with one another.

Only if you have an avie looking like Christopher Walken in the "Beyond" section which can be accessed through a strange portal....

Sorry - semi-obscure movie reference!

You never know... for reasons not given, there are a number of RL companies who have set up shop under thier RL company name right here in SL...maybe they know something we dont.

Here's a list of some brand names that lost their rights to them because they went into common use:

Allen Wrench
Refrigerator
escalator
heroin (originally registered by Bayer as a pain reliever)
spandex
touch tone
zipper
crock pot
dry ice

Companies that are considered "at risk" of losing the rights to their name due to common useage:

Kleenex
Frisbee
Vaseline
Jacuzzi
Rollerblade

This makes it very essential for a company to hold on to their brand name both in RL and in SL. If someone is using a RL brand name in SL without permission it's only because they haven't caught yet and they could face very serious and costly legal battles when and if they do.

Is your name Macy, McDonald, Toyota, Pfizer and you'd like to use the name? Don't assume you can. Names can be and are registered trademarks. A hotel chain named McSleep in the United States was forced to change their name after McDonalds took them to court. So, as you can see, the name does not even have to be identical.

Are you serious about your SL business?

If so and you plan to be around any length of time then develop your own identity.

If you just made some great Gucci knock-off's and you want to make a quick buck, you could use the name Gucci for a while but eventually you will be forced make changes.

I call my place the Egotherapy Centre. I checked the net at the time and could find no RL businesses called Egotherapy, although I think there was a music album with that title. The official name, as in my group title, is 'Egotherapy (SL) Group' and I make clear it has no connection with any RL organisations of that name in the group charter.

/stands back and awaits the mob

At one point in my SL existence, I had a single product that used a real name brand...I was crucified by several members of this forum. Not only did they get into legal points, but also moral and personal points (i.e. "Your business would fail if you didn't ride the coat-tails of an already established RL company"

Anyway. They are half right in their argument...it's best to create your own identity...it's safer that way, and you won't be stepping on anyone's shoes, or piggy-backing on someone else's success.

* grabs pitchfork and torch then feels dejected when Michaels post wasn't all that sensational.

I think when a name gets to a certain status that even it's your name, you probably won't get away with it. There were cyber squatting cases where the ruling went in favour of the big brand because their status was considered to be so well known.

Comes down to Trade Name. REGISTERED ones can't be used but non-registered can.

Copy Rights can come into play if you use logo or exact product.

Permission can be got to use such things but I would get it in writing and rights ($L) will be shared.

Autumn has a good point that there is a difference between a registered trademark and a copyright. Although they are similar they are not the same.

I think there's limits to it.. If you have a clothing store, you can't prevent somebody from having, say, a car dealership with the same name. As long as you don't try to play off the other place with the same name, it's fair use.

For example, a random google turns up http://www.macyscoffee.net/

True. However, in the case that I gave as an example it was a hotel chain called McSleep. McDonalds took them to court and the courts determined that the hotel chain did have to change their name because the use of "Mc" had become so recognized with McDonalds that the public would be confused and would assume that the hotel was affiliated with the restaurant chain.

It would appear that much of this is up to the interpretation of the courts. I don't think I could hire attorneys that could go up against any of the big guys attorneys, not that I plan to copy any of their names anyway.

This is not entirely correct, nor is it entirely incorrect.

In the US, federal registration of a trademark confers some benefits, but the absolute right to exclude others from using the trademark is not one of them. Rather, trademark registrations specify the goods and services for which the trademark is registered. The owner of a registered mark can initiate infringement actions in federal court and is entitled to exclusive use of the mark on the registered goods and services as well as a buffer zone of expansion into reasonably related products.

There are a very tiny minority of registered marks that are considered "famous" marks and are entitled to broader protection than the registration and the reasonable zone of expansion. That's why you could run into trademark trouble for selling Pepsi brand lampshades or Kodak brand hot dogs.

For the most part, though, the owners of registered trademarks cannot exclude others from using a similar mark on totally unrelated goods.

Even unregistered marks, though, are entitled to some protection just for having been in use for some time. This protection varies from jurisdiction to jurisdiction, but generally if there is an established trademark for a particular good or service, a new user can't just come in with a confusingly similar mark on the same good or service, even if the established mark is not the subject of a federal registration. The user of an established unregistered mark may be able to prevent someone else from obtaining registration of the mark for the same goods or services.

A "logo," by the way, is usually also a trademark; there may be copyright inherent in a logo as well. If you appropriate another entity's logo for the purpose of selling goods or services in commerce, you are probably going to find yourself in TM hot water rather than copyright hot water, though either could occur depending upon the logo and what you do with it.

Registration of domain names is a related but different matter from registration of trademarks, and is governed by international agreements and a somewhat different set of precedents.

Finally, while the specifics of what I've said pertain to the US only, the rules aren't that different around the world.

Note: The RL person behind Madhu Maruti is an intellectual property attorney; but she is not your lawyer, and this is just meant as a general statement of the law and not as legal advice. Thanks.

In Hollywood, the studio legal departments spend a lot of time researching business filings from all over the country just to make sure the fictitious business names that the writers come up with for movie and TV scripts aren't already in use. And that still doesn't stop people from coming along later and trying to sue claiming they were already using the name of the villain's company in the latest hit movie.



"Look... me and the McDonald's people got this little misunderstanding. See, they're McDonald's... I'm McDowell's. They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds."