Fundr: limited claim trade name right

Many companies assume that the use of a trading name or a domain name is sufficient to make a broad claim on the exclusive right to that name. These assumptions can prove painfully wrong. Since 2016, a company named Funding Innovation (later “Funder Inc.”) has been using the name FUNDR as a trade name and domain name. The company provides consulting services in the field of corporate funding and government grants.

To protect its name & goodwill, it later files a trademark for the name, but not for the logo. There is a risk in this, and this comes true when the trademark register refuses registration of the word mark, because this is seen as too descriptive.

That same year, Rabobank launches an online credit application service called FUNDR. The bank files the logo as a trademark immediately. When Funding Innovation opposes this application on the basis of its trade name, its opposition is rejected. Rabobank offers its services under the name Rabobank (therefore there is no trade name infringement).

Rabobank uses the name FUNDR as a service mark. A descriptive trade name provides very limited protection. Both the services and the way in which Rabobank reaches out to its public are different.

Result: the claims is rejected. At the end of the day, if Funding Innovation immediately would have applied for the combined logo as a trademark and not just the word mark, this case could have ended completely differently.

tradenames



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?