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Chobani vs Hobani

Discussion in 'Copyright, Trademark, Patent Law' started by adjusterjack, Jan 11, 2021.

  1. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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    Location: Anywhere in the US.

    Posters frequently come to legal websites to ask about infringement but they always use made up names as examples. The question can't really be answered with made up names and they are reluctant to use real names.

    Well, a poster on another site asked if making yogurt and calling it Hobani would infringe on the Chobani brand.

    I said yes. It's close enough in name to confuse consumers.

    What say you all?
     
  2. zddoodah

    zddoodah Well-Known Member

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    Almost certainly.
     
  3. army judge

    army judge Super Moderator

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    The old standby, "it depends".

    Is Hobani the person's name?
    Is the poster honoring a person named "Hobani", related to the person?

    One could argue, I won't, that Hobani and Chobani are two distinct names.
     
  4. Tax Counsel

    Tax Counsel Well-Known Member

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    Indeed, it seems pretty clear that the guy wants to make that association and benefit off the other company's name. In this case, just dropping the first letter in the name isn't likely to be distinctive enough to avoid confusion.
     
  5. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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    It's a stretch but there is a person in Saudi Arabia named Majed Hobani.

    :D
     
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  6. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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    My thinking too.
     
  7. Tax Counsel

    Tax Counsel Well-Known Member

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    And even if it was the last name of the person selling the product that would not provide a defense to infringement. Someone with the last name McDonald could not open a burger joint called McDonald's and hope to successfully defend against the big McDonald's in a trademark infringement suit.
     
  8. army judge

    army judge Super Moderator

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    I just took a guess, but it sounded as if it could be a REAL name in certain cultures. LOL :)
     
  9. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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    McDonald's Lunch in Girardville, PA seems to be unscathed. The town is so small even the one horse left.

    upload_2021-1-12_8-13-17.png
     
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  10. flyingron

    flyingron Well-Known Member

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    So? The fact that it is your name doesn't give you rights to infringe on other's marks. I know of a number of people who can't use their name at all (Walter S. Taylor is a classic example, but there are more) because of an already famous competing mark.
     
  11. PayrollHRGuy

    PayrollHRGuy Well-Known Member

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    So what does he call himself.
     
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  12. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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  13. flyingron

    flyingron Well-Known Member

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    In the trade, Water S. with a black box about the size of the word Taylor. He calls his winery Bully Hill so as not to infringe on Taylor.
     
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  14. army judge

    army judge Super Moderator

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  15. hrforme

    hrforme Active Member

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    I had a strange thought while watching TV on a short trip this weekend/early this week. (I rarely watch TV nor see commercials otherwise) and a commercial came on for "Loan Depot" and my ear heard "Home Depot" and my brain wondered when HD started doing home loans LOL.... the actors say it without an emphasis on the "L"..... have to wonder a bit if they aren't trying to get attention/profit off of the closeness? I have to wonder if there is anything HD could do about it?
     
  16. adjusterjack

    adjusterjack Law Topic Starter Super Moderator

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    I don't think there is a cause of action there because Loan Depot isn't selling what Home Depot is selling. And there shouldn't be any confusion among consumers.

    Which raises the question: Would I have a problem if I opened a book store and called it "Tome Depot"?

    If I limited it to poetry books and called it "Poem Depot"?

    Lawn figurines and called it "Gnome Depot"?

    Bumper refinishing - "Chrome Depot"?

    Electrical components - "Ohm Depot"? (Now that one could get Home Depot's attention.)

    :D
     
  17. zddoodah

    zddoodah Well-Known Member

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    I've seen those commercials also. The answer is maybe, although LoanDepot has apparently been around over a decade, so it may be too late.

    In terms of trademark infringement, the answer is somewhat dependent on where the case is filed. HD is based in Georgia in the 11th Circuit, while LD is based in California in the 9th Circuit. Both of those circuits use the following factors:

    1. Degree of similarity between the marks: Two word marks with one common word and the other word in LD's mark is almost a rhyme with the word in HD's mark, but the words are otherwise not similar in meaning.

    2. Strength or weakness of the plaintiff's mark: "Home Depot" is not, in and of itself, particularly strong (in the trademark sense), but it's obviously a nationally famous mark.

    3. Proximity/similarity of goods/services offered: Virtually none.

    4. Defendant's intent: Don't know.

    5. Actual confusion: Don't know.

    6. Similarity of marketing/advertising channels: Probably quite similar, and there is also likely to be a greater than average percentage of folks who might be inclined both to shop at HD and use LD's services.

    Each circuit has one or two additional factors that the other doesn't, but I don't think either would tip the balance significantly, so I don't think this would be a good infringement case (subject, of course, to the two unknowns). However, there might be a decent case for trademark dilution. To state a claim for trademark dilution, a plaintiff in the Ninth Circuit must allege that (1) the plaintiff’s mark is famous and distinctive (HD's mark is certainly famous); (2) the defendant is using the mark in commerce (LD is using its mark in commerce); (3) the defendant’s use began after the mark became famous (yup); and (4) the defendant’s use of the mark is likely to cause dilution by blurring or tarnishment. The last factor would require expert testimony as to blurring (tarnishment wouldn't be an issue). I did not look to see if/how the 11th Circuit might look differently at this issue.
     

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