Legal Question in Intellectual Property in California

I would preliminarily agree with you that the request to change your name seems unsupported by any enforecable legal right. Your defenses would include differences in the actual name and differences in the product or service category.

When a trademark includes words that are in general use, it is often necessary that the trademark application must disclaim any right to the common phrase, used by itself or in other combinations.

Also, marks registered for certain purposes do not preclude their use for different categories of products or services. "Purple Passion" registered for perfume probably does not prevent others from calling their paint, or their tulip bulbs, or their wine, "Purple Passion."

This is a tricky and technical area, and I suggest legal counsel before you get too committed or you offend the other party into a lawsuit.

You can research the other firm's trademark and get an idea of the products it covers and any portion of the text that was disclaimed.

Unless they have a trademark for the name 'ZZZ Image' in the field of software, software design or some related category, it's unlikely that they have a right to stop you selling a product called 'ZZZ Image Galleries.' Given that their services appear to be marketing and consultation, it seems highly unlikely that your use of a fairly generic term (akin to "XYZ Corp.") is likely to engender any confusion in the mind of the average consumer, who is unlikely even to have even heard of this company. Since the chief test for infringement is "likelihood of confusion" they have a tough row to hoe, particularly since you aren't even using the name as a corporate trademark, but only as a product name.

Realistically, if it were McDonald's that had an issue with the name of a software plugin you had created called "McGallery," you might have something to worry about, if only because McD's is so litigious, but if what you are describing is the typical free Wordpress plugin where your costs are defrayed by voluntary contributions of end-users, you hardly qualify as commercial competition; you're clearly not seeking to trade on ZZZ Image's goodwill and trade name in order to generate commercial revenue, and you're not disparaging them . . . . all in all I think they were ill-advised to even contact you. They must have an aggressive IP attorney telling them to confront everyone who uses the name ZZZ Image, to try and protect its dilution.

You need to research the alleged trademark to find out exactly what is protected (and disclaimed); and for what class of goods. Generic terms are usually required to be disclaimed, as they are free for the public to use. The class of goods protected is also important. If you are in a different class, that's a different story and you're probably fine. Speak with an intellectual property attorney in your area.

Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise

Franchise Attorney