January 21, 2013
To Skype or Not to Skype?: That Is the Question

By Cliff Ennico
www.succeedinginyourbusiness.com

"I am a licensed psychiatrist and relationship counselor.  For the past few years, I have been a successful blogger on the topic of dating, specifically online dating strategies for people over the age of 40.

I have a fairly sizable following on social media, and want to start a series of online webinars using Skype®, the popular wireless telecommunications platform.  Basically, people would register for a webinar on my website, be given an access code, and dial in to the Skype® communication at the appropriate time.  It will be just like a telephone conference call, except that attendees can see me, what I'm writing on the whiteboard, and so forth.  Eventually, I plan to sell advertising for these webinars.

My only problem is naming the webinar series.  Since childhood everyone has called me 'Spike.'  So I thought about calling my webinar series 'Skype with Spike.'  It's easy to remember (although a bit of a tongue-twister), and all of the relevant website URLs are available.

My lawyer isn't crazy about this idea.  He says the Skype® people won't like me using this name online.  I can't for the life of me think of a reason why Skype® would object.  I plan to state clearly at the beginning of each webinar that I'm not affiliated with Skype®, and that my opinions are my own.  If anything, I would think Skype® would like this program as it helps to promote their brand.  Also, everyone nowadays says they're going to 'Skype someone' when they're planning to do an Internet telephone call, whether or not they are actually using the Skype® service.

What do you think?  It's too good an idea to pass up, but the name has to be catchy or this webinar series won't get off the ground."

Boy, how far we've come in such a short time.  Remember when you had to actually go to a physical location in order to attend a seminar?

This email falls into the category of "something you really should be able to do because it doesn't really harm anybody, but you can't do it because our behind-the-times legal system hasn't caught up to today's technology."

Let me explain.

If someone has registered a name with the federal government as a trademark, you can't use it for the same or a similar category of products or services.  That is called "trademark infringement," and you can get sued for that, especially if the trademark owner is a large corporation with billions of dollars to spend on lawsuits.

What you are proposing to do is not technically "trademark infringement," because you are not claiming to be affiliated with Skype® - on the contrary, you are disclaiming any affiliation with that company.  So far, so good.

But there's another way Skype® can come after you in court if they don't like what you are doing.  It's called "trademark dilution," which gives the owner of a famous trademark (and Skype® would certainly qualify, precisely because its name is becoming a commonly used English verb) the power to prevent someone from using the trademark in such a way as to lessen its uniqueness. 

It doesn't matter what you are doing.  Although selling products and services that are totally different from Skype®'s may prevent you from being sued for trademark infringement, that is no barrier to a "trademark dilution" lawsuit.

The reason is that using a famous trademark for any product or service is highly likely to confuse the marketplace because the famous mark, being so well known among the consuming public, will make people assume that you are affiliated with the owner of the mark regardless of the product or service being sold.  While the idea of Skype® launching an underwear brand is pretty far-fetched, it is not inconceivable that Skype® may want to launch its own webinar series someday, and people will naturally think your webinars are part of that series because you use their name.

The fact that "to Skype someone" is becoming part of everyday English may be a defense if Skype® launches a trademark dilution suit against you, but unless you have the resources to fight a multibillion dollar company in federal court, I would just pick another name for your series.  There are consulting firms (known as "brand name consultants" or "product name consultants") who can help you find the right name for your webinar series.  They will even help you trademark it so no one can "infringe" or "dilute" that name without your permission.  To find these folks, check out www.brandinstitute.com, www.namestormers.com, and www.namebase.com.

If you really think "Skype with Spike" is the only possible name, then email Skype® and ask for permission (maybe offering them some free advertising on your webinars).  But don't hold your breath that they will say "yes."

I would also stay away from "Google with George," "eHarmony with Henry," and (ahem) "Succeeding in Your Business with Cliff."


Cliff Ennico (www.succeedinginyourbusiness.com), a leading expert on small business law and taxes, is the author of Small Business Survival Guide, The eBay Seller's Tax and Legal Answer Book, and 15 other books.  COPYRIGHT 2013 CLIFFORD R. ENNICO.  Permission granted for use on DrLaura.com.


Posted by Staff at 12:03 AM