Naming a website targeting students of a local college
May 4, 2020 10:56 AM Subscribe
I'm planning to start a website where I will post videos that can be purchased to help students at a local college prepare for their exams. The school is named something like Northwestern College. Is it a legal problem (copyright or trademark or something?) if I named my website something like NorthwesternMathPrep.com? I plan to have a disclaimer on the site indicating that the site isn't affiliated with the college.
I'm located in Canada.
IANAL but my understanding is it is a trademark problem - the school would normally own the trademark to their name. Using their name for your own profit and in a context where it might cause confusion (the fact that you are planning on a disclaimer is evidence that it could be confusing) makes this a possible problem. You would certainly need to talk to a trademark lawyer to have confidence about the answer to this question for this specific name.
Certainly, even if it is problematic, some people opt to do it and see if they can get away with it. If the University has a trademark office they will eventually notice. (In US, for example, colleges with big sports teams have a vested interest in protecting their trademark) Most likely outcome if you are small potatoes is a cease and desist order. However why invest your time and money in building a reputation under a name that you might not be able to protect and maintain over time? A more distinctive name is harder to build up the reputation in the beginning but it will also protect you from others using a confusingly similar name to yours.
posted by metahawk at 11:08 AM on May 4, 2020 [1 favorite]
Certainly, even if it is problematic, some people opt to do it and see if they can get away with it. If the University has a trademark office they will eventually notice. (In US, for example, colleges with big sports teams have a vested interest in protecting their trademark) Most likely outcome if you are small potatoes is a cease and desist order. However why invest your time and money in building a reputation under a name that you might not be able to protect and maintain over time? A more distinctive name is harder to build up the reputation in the beginning but it will also protect you from others using a confusingly similar name to yours.
posted by metahawk at 11:08 AM on May 4, 2020 [1 favorite]
Best answer: IANAL, IANYL. But I work for an American university, and I can't see our legal office allowing something continue to exist which could be (mis-)understood to serve our students, which works with our product (i.e., an eduction), and using our name.
Our general counsel is a super nice lady, but I think she'd burn you to the ground [metaphorically speaking] without a second thought.
posted by wenestvedt at 11:10 AM on May 4, 2020 [4 favorites]
Our general counsel is a super nice lady, but I think she'd burn you to the ground [metaphorically speaking] without a second thought.
posted by wenestvedt at 11:10 AM on May 4, 2020 [4 favorites]
Best answer: Nominative fair use is the trademark term of art for this sort if thing and it is not a well developed legal doctrine in Canada. So the answer is probably "no one knows for sure".
posted by jacquilynne at 11:14 AM on May 4, 2020
posted by jacquilynne at 11:14 AM on May 4, 2020
Best answer: It's going to depend on the particulars. If you set up "Rochester Math Prep" in Rochester, NY, where there's a University of Rochester and a separate Rochester Institute of Technology and it's the name of the city, they're going to have a much harder time complaining about it than if you set up a Goucher Math Prep in Towson, MD near Goucher College.
posted by Jahaza at 11:23 AM on May 4, 2020 [3 favorites]
posted by Jahaza at 11:23 AM on May 4, 2020 [3 favorites]
IANAL.
A few relevant examples I can think of:
- The Harvard Book Store exists; it is geographically near Harvard, in the area known as Harvard Square, but not affiliated with the university.
- Similarly the Penn Book Center was near the University of Pennsylvania (but, of course, is also in Pennsylvania). They renamed recently but as far as I can tell this was not because the university had a problem with the name.
- The Princeton Review test prep company is not affiliated with the same-named university. I can't tell if they started in Princeton, New Jersey.
These are education-adjacent companies (and the Penn Book Center sold textbooks for some Penn classes) and continue to exist; I wonder if it has something to do with the names also being geographic names.
That being said, whatever content you come up with is likely to be usable across multiple universities, so by having a name that ties yourself to a single one really limits you. I'd try and build a brand that doesn't tie you so explicitly to one particular university.
posted by madcaptenor at 11:28 AM on May 4, 2020
A few relevant examples I can think of:
- The Harvard Book Store exists; it is geographically near Harvard, in the area known as Harvard Square, but not affiliated with the university.
- Similarly the Penn Book Center was near the University of Pennsylvania (but, of course, is also in Pennsylvania). They renamed recently but as far as I can tell this was not because the university had a problem with the name.
- The Princeton Review test prep company is not affiliated with the same-named university. I can't tell if they started in Princeton, New Jersey.
These are education-adjacent companies (and the Penn Book Center sold textbooks for some Penn classes) and continue to exist; I wonder if it has something to do with the names also being geographic names.
That being said, whatever content you come up with is likely to be usable across multiple universities, so by having a name that ties yourself to a single one really limits you. I'd try and build a brand that doesn't tie you so explicitly to one particular university.
posted by madcaptenor at 11:28 AM on May 4, 2020
The Harvard Book Store was founded in 1932. It's like Red Wing Boots--a use so old that it would be extremely difficult for the supposedly senior user to prevent.
IANYL. As jacquilynne says, the defense here under U.S. law would be nominative fair use. I have no knowledge of Canadian trademark law, so I don't know whether it would be applicable there. (I'm assuming this is a Canadian school. If it's an American school, and your website is marketed to and offers services only to Canadians, and the American school hasn't taken out a Canadian trademark, there might be an extraterritoriality issue on which you could skate by.) If you're planning on sinking money into this, get some legal advice first.
posted by praemunire at 11:37 AM on May 4, 2020
IANYL. As jacquilynne says, the defense here under U.S. law would be nominative fair use. I have no knowledge of Canadian trademark law, so I don't know whether it would be applicable there. (I'm assuming this is a Canadian school. If it's an American school, and your website is marketed to and offers services only to Canadians, and the American school hasn't taken out a Canadian trademark, there might be an extraterritoriality issue on which you could skate by.) If you're planning on sinking money into this, get some legal advice first.
posted by praemunire at 11:37 AM on May 4, 2020
Ask an attorney in your area. Someone with whom I am acquainted once started a company called Not Harvard. It did not last long. I believe attorneys were involved.
posted by Bella Donna at 12:23 PM on May 4, 2020 [1 favorite]
posted by Bella Donna at 12:23 PM on May 4, 2020 [1 favorite]
IANAL etc.
1) Trademark law is murky AF and full of weird contradictory precedents.
2) The real question is not, "is this legal?" It's, "how litigious is the school in question?"
I'd start by contacting the school and asking, rather than investing in a lawyer to check legality. Maybe check around for similarly named sites: is there a non-affiliated StudentsOfNorthwestern.com? NorthwesternersHobbies.com?
If the school sues you, "technically we're legal" is not going to make your website usable by students. At best, you get a years-long ugly legal battle wherein your expenses are eventually covered. More likely, you get a quick shutdown because your webhost refuses to get involved.
posted by ErisLordFreedom at 12:32 PM on May 4, 2020 [2 favorites]
1) Trademark law is murky AF and full of weird contradictory precedents.
2) The real question is not, "is this legal?" It's, "how litigious is the school in question?"
I'd start by contacting the school and asking, rather than investing in a lawyer to check legality. Maybe check around for similarly named sites: is there a non-affiliated StudentsOfNorthwestern.com? NorthwesternersHobbies.com?
If the school sues you, "technically we're legal" is not going to make your website usable by students. At best, you get a years-long ugly legal battle wherein your expenses are eventually covered. More likely, you get a quick shutdown because your webhost refuses to get involved.
posted by ErisLordFreedom at 12:32 PM on May 4, 2020 [2 favorites]
Nthing "ask the school." Who knows, they could appreciate your work and link to your site as a student resource.
Worst case, they could say "don't use our name." You could then ask "can I use [this nickname]?" For instance, use the name or nickname of the mascot or the students.
posted by filthy light thief at 12:48 PM on May 4, 2020
Worst case, they could say "don't use our name." You could then ask "can I use [this nickname]?" For instance, use the name or nickname of the mascot or the students.
posted by filthy light thief at 12:48 PM on May 4, 2020
Best answer: I would hesitate to call the school and just ask. My guess, based on my own experience with lawyers, is that if it is at all ambiguous and you ask the school, their lawyer are going to say "no" unless they actually have an explicit permissive policy. If you ask and they say clearly "yes" then they have basically given you verbal permission to use their name - something I can't imagine any lawyer or bureaucrat doing. The exception is if they have a formal trademark licensing program but I would be surprised if that allowed for education uses of their name (vs clothing or other use of the logo on a tangible item).
Also, if you call and ask, you need to make sure you talking to the right person. Bad advice(especially if it verbal) is not going to keep you from trouble with the name later.
posted by metahawk at 2:42 PM on May 4, 2020 [2 favorites]
Also, if you call and ask, you need to make sure you talking to the right person. Bad advice(especially if it verbal) is not going to keep you from trouble with the name later.
posted by metahawk at 2:42 PM on May 4, 2020 [2 favorites]
This thread is closed to new comments.
posted by JimN2TAW at 11:06 AM on May 4, 2020 [3 favorites]