Common Law Trademark

[jaw1978]

I am trying to name my start-up golf business. We are going to engage in the business of custom fitting golf clubs and building them. We have identified a name that is available according to the Secretary of State, but are concerned that a large golf club "original equipment manufacturer" based locally may have a common law claim to our proposed name.

This OEM has a custom fitting department that uses the exact name we are going to use. While not trademarked, I realize there are common law rights afforded them. The name we've registered is The Fitting Studio, which is also what they call their fitting department. I'm not sure if it matters, but our business is in a 20 foot trailer located on a driving range and theirs is a indoor facility in a large office park.

Despite this fact, the name is used generically for many fitting centers and I think can be argued that consumers do not identify that specific name with this specific OEM because it is more descriptive than unique. And none of their customers could ever, within reason, mistakenly call us in confusion over the name. Nor does this name carry any value in the industry as a way for us to drive business to our location by piggy-backing off of the name being recognizable. My question is how worried I should be that this will become an issue or if it is not one.

 

[jaw1978]

I am trying to name my start-up golf business. We are going to engage in the business of custom fitting golf clubs and building them. We have identified a name that is available according to the Secretary of State, but are concerned that a large golf club "original equipment manufacturer" based locally may have a common law claim to our proposed name.

This OEM has a custom fitting department that uses the exact name we are going to use. While not trademarked, I realize there are common law rights afforded them. The name we've registered is The Fitting Studio, which is also what they call their fitting department. I'm not sure if it matters, but our business is in a 20 foot trailer located on a driving range and theirs is a indoor facility in a large office park.

Despite this fact, the name is used generically for many fitting centers and I think can be argued that consumers do not identify that specific name with this specific OEM because it is more descriptive than unique. And none of their customers could ever, within reason, mistakenly call us in confusion over the name. Nor does this name carry any value in the industry as a way for us to drive business to our location by piggy-backing off of the name being recognizable. My question is how worried I should be that this will become an issue or if it is not one.

Does no one have thoughts on this issue?

 

[Michael Wechsler]

That might be a very difficult name to trademark being so descriptive. Are there common law rights? Maybe. I did a brief online search and see the name being used as English, e.g. we went down to have the clubs checked in the fitting studio and left them there overnight. Your best bet is to have some other unique or fanciful name appear in connection with the rest to give your brand notoriety and identity.