Just Because It Sounds The Same Doesn’t Mean It Violates Your Trademark

I just saw an interesting decision from the federal district court in Northern California. A company I never heard of, called Groupion brought a trademark infringement claim against a company everybody’s heard of, Groupon. Groupion argued that Groupon infringed its trademark by adopting such a similar name. The court disagreed. It applied an 8 factor test and Groupion failed on all 8 counts. I won’t list every one, but a key element was that there was little chance that anyone would confuse the two marks. Groupion provides cloud based business management solutions. Groupon provides daily deals. It’s unlikely that anyone looking to store its data off site would be confused by a service offering 50% off on a pedicure. And it didn’t look to the court like Groupon picked its name to sponge off Groupion’s good will. Interestingly, both names are combinations of two words – Groupion was a combination of “groupware” and “companion.” Groupon is a combination of “group” and “coupon” – which pretty much explains its business model. Kind of interesting. And there are two lessons here I think. First, before you start spending your anticipated damage award from a trademark suit, recognize that similarity alone doesn’t win the case. And on the flip side, if you are thinking about a name for your business, don’t assume you can’t use it just because it sounds like someone else’s. As self serving as this sounds, check with a lawyer. Maybe you can find one on Groupon.