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Same name different services? Trademark

Discussion in 'Copyright, Trademark, Patent Law' started by gemfineart, May 15, 2019.

  1. gemfineart

    gemfineart Law Topic Starter New Member

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    Jurisdiction:
    California
    I am starting a company and chose my brand name. When I did my due diligence and checked the uspto.gov website I saw only one company that has already registered that brand name. However, they are not a national known brand, they have only one location in another state and they are in hotel services. My products are physical goods that I plan to sell direct to consumers through online platforms (throughout the U.S.) so I am not in one geographical location. From what I was reading, many places suggested that if the names are in completely different categories then it is fine to use because a brand doesn't "own" a name they "own" the name only as it relates to the services/products they provide. As long as customers who are purchasing the services/products are not confused as to who the source/seller is then it's ok. Should I still go ahead with the chosen name or pick a different name? Any advice?

    Some more info about the trademark
    Type of Mark SERVICE MARK
    Other Data Concurrent use information. We are using the name in commerce and intend to cooperate by all means necessary to the concurrent use requirements
     
  2. adjusterjack

    adjusterjack Super Moderator

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    Sorry, nobody's going to give you any kind of opinion without you revealing the real brand name and the specific products and services involved with each company.

    People who post here with the same question don't want to do that so the only advice we can give is consult a trademark attorney.
     
    hrforme likes this.
  3. zddoodah

    zddoodah Well-Known Member

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    When a plaintiff sues for trademark infringement, he/she/it must prove likelihood of confusion, which means that consumers are likely to be confused about whether the defendant's goods/services are actually coming from or approved by the plaintiff. For example, if you marketed a sports beverage under the name "Nike," consumers would think it came from the shoe/apparel company based in Oregon. On the other hand, if you sold hemorrhoid cream under the same name, the likelihood of confusion would be significantly less (although, because of the extreme level of name recognition of "Nike," you'd still be barred from doing it).

    Under federal trademark law, the various federal circuit courts have developed lists of factors to consider when evaluating likelihood of confusion. You can review those factors at this site. While the lists are all slightly different, one thing that is, I believe, universal, and which is extremely important, is the extent to which the plaintiff and defendant are marketing similar or completely different goods/services.

    Consult with a local attorney for an opinion about your particular product/service and the name at issue.
     
  4. adjusterjack

    adjusterjack Super Moderator

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    Another thing that's relatively universal in a trademark infringement is that the more established company likely has considerable funds with which to hire a law firm to pursue the lawsuit where the startup business likely has no money to properly defend against a lawsuit and could easily be wiped out by the lawsuit.
     
  5. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    There are a couple of trademark issues which need to be identified. First is the class of the mark, which it seems may be completely different. Having a trademark for shoes doesn't by itself prevent anyone else from registering the same mark for food products.

    Another issue you've identified is qualification for a mark. You're under the assumption that the company should (have been) only be entitled to state recognition and that the federal trademark should not be not valid. That's a fine theory but, as of right now, the mark owner has a federal trademark and you are potentially fighting an uphill battle - if the other company has a mark which you would need to battle since it conflicts with your own desire to use a similar mark. Keep that in mind since, even if you are correct about the validity of the competitor's federal mark, you wouldn't be able to obtain federal trademark protection since it appears that the company using the mark would have superior state rights. (Yes, state trademark registration does exist.)
     

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