I am interested in selling a specific brand name of goods via an online store. For all intensive purposes I'll call the brand name "Brand" and they make a variety of items I would like to sell via the online store.
Would it be trademark infringement if I named the online store "Brand USA"? My online store would be dedicated to selling their items only but I don't have any affiliation with the company. They don't use the R with a circle registered mark but they trademarked their name ten years ago and have since renewed it.
Maybe, if you don't make some effort to distinguish your company from the company whose name you want to use.
Recently a 9th Circuit court sided with users of Lexus' TM, http://www.metnews.com/articles/2010/toyo070910.htm, and the opinion mentioned that internet consumers are savvy enough to know that domain names containing a TM in combination with other words are unlikely to be an official website, but a domain name cannot suggest sponsorship or endorsement by the trademark holder. You'll need to consult TM counsel in your own (2nd) Circuit to determine what standards the courts use there.
Generally, it's risky to just add USA to someone else's TM, whether or not they use a registered symbol with their mark or not, because that's likely to confuse consumers about the affiliation that you acknowledge doesn't exist. That confusion is the essence of TM infringement.
Choosing a TM is a crucia decision, and in your case, one that could lead to litigation. See an IP lawyer to choose a viable and available name.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
One thing to consider is contacting the b rand company and see if they are interested in having you as a licensed distributor - which would allow you the use of the Brand TM.
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If they have trademark rights in BRAND, then BRAND USA would very likely be an infringement. Since you were able to look up their TM registration in the first place, go back and see if it is on the Principal Register or the Supplemental Register. If it is on the Principal Register, that indicates that BRAND is inherently distinctive and your use of BRAND USA is an infringement of their federally registered mark.
If it is on the Supplemental Register, then you might be ok if the circumstances are right. Their long-use of BRAND certainly works against you, and you definitely need to discuss this with an attorney who specializes in intellectual property. Even if it is still on the Supplemental Register, the mark may have become distinctive due to secondary meaning. As you can see, there are a number of relevant factors in play, and if you want to move forward with BRAND USA you need to discuss this with your attorney or you definitely run the risk of infringement. As mentioned by my colleague above, a licensing agreement with the owner of BRAND to use BRAND USA would get you around the TM infringement issue if it exists.
Regarding the products themselves, you are ok with reselling those so long as your purchase of them is not subject to any sort of licensing agreement and your purchase of the goods was authorized. Again, you need to clear this with your own attorney.
Disclaimer: In no way is this information considered a legal advice, but is only a statement of the law. This information does not form a client-attorney relationship.
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