The Business of Software

So I recently changed my (still under development) product name to Overture because I really didn't like the previous one.

Lately I've had a couple of people ask me about possible tradmark issues with Yahoo's Overture which is no longer around by that name. The initial research I did seemed go indicate that because I'm not in the same or similar business and I'm not trying to leverage the name, I should be ok. Now I can't say I was all that thorough and I didn't consult an attorney so I'm not sure about this.

Another thought is, the fact that people think of them when they think of that name, am I just setting myself up for a rough time when it comes to marketing?

I'd rather not change my name yet again but I suppose I should get this settled before launching version 1.0.

Keep in mind my company name is Earthlingworks so the problem is with my product name and not my company name. If I do change it I'll probably do something similar to Balsamiq Mockups and call it Earthlingworks Proposals  (I hate name searching).

So, thoughts? Just wondering if I should not worry about it or change the name now to avoid problems later.

You can't (in general) trademark a normal word - you can get into trouble for 'passing off', if you are gaining advantage by the association with Yahoo.
The difficulty with any legal advice is that it comes down to what happens in court. ,Would Yahoo care enough to sue, can you afford even to turn up and explain, would a judge just decide that all software is in the same market - even if you are selling a music package?

"...because I'm not in the same or similar business..."

I agree with Martin.  You're largely concerned with whether the judge thinks it's possible for the market to confuse the two products.  Since I don't even remember what Yahoo!'s Overture did, I think that's a fairly legitimate concern.

Typically, if Pepsi announced a soda called "Flash", General Motors introduced a car called "Flash" and Adobe continues to sell Flash, it's not a problem because both Pepsi and General Motors would aggressively advertise their products and make it extremely, perhaps painfully clear that they're not selling software.

Both you and Yahoo! offer software, so you would have to go out of your way to make sure that when people see Earthlingworks' Overture, they instantly understand it has no connection to Yahoo!  In fact, whenever they see your product, Yahoo! shouldn't even enter their minds at all.

You may not necessarily want to retain a lawyer but if you decide not to, you definitely should talk to a marketing agency.  For example, they may suggest that you avoid using the colors yellow and purple, and they'll tell you which fonts to avoid using so that your advertising material and web site don't make anyone think of Yahoo!

Well if it's there's even a chance then I'm not going to bother with an attorney, I'll just change the name as I've not released yet.

Also, I might be better off from a marketing perspective to have a different product name being that my customers are in the industry that would know about it.

It's becoming  a problem, the difference between the publics view of computers and ours.
It happened to a friend of mine in an unfair dismissal case, he was a sysadmin doing web design on the side. The court ruled that this was the same as his work for the company - it's all computers - and that the company were justified. If he had been a welder at work and doing carpentry for himself he would probably have been ok.

There are plenty of good introductions to trademark issues; even the first google result on the subject (http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm) would probably answer your question.

I would change the name if I were you, preferably to something where you can get the .com domain.

Thanks for the link, that's much more clear than what I previously read.

Now I go back to searching for a new product name; my least favorite part of starting a mISV.