I am starting a coupon company called tasting xxxxxxxx (city name). However there is an other company locally called taste of xxxxxxx (same city name after taste of). However, they host events for local restaurants and are NOT in couponing. Can I be sued? We have totally different business overview but we both work with local restaurants. Or can I mention on our website that we are not affiliated with taste of xxxxxxx
Intellectual Property Law Attorney
You might be able to do this with proper legal guidance, but it's a tricky task that will require an attorney's help.. I am confident I know exactly the other company of which you speak. And, if I am right they are not the only one, there is a second travel discounter also using the TASTE OF XXXXXXX for coupons for a taste of the attractions of that city to get you to attend a timeshare presentation or travel club presentation. I have even had some clients who have attended it. And, if I am correct about the mark, there is also an abandoned US Trademark application for that TASTE OF XXXXXXX mark, abandoned because it was a pro se screw up. At any rate, Taste and Tasting are close but yet different, which gives options for argument and likely registration. Call or email if you would like to discuss this further.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
I agree with Mr. Burdick that you may be able to use that "XXXXXXX" name but you need attorney guidance to properly determine that. Generally speaking, names of well-known cities and other geographical indicators are not distinctive and a single entity cannot stop others from using such terms. Your case illustrates precisely why that should be the case...it sounds like other businesses may need to be able to use that geographical name to describe their service. This is the case whenever such a geographical term is typically associated with a particular good or service. Examples would include "New York" for fashion, media or financial goods/services; Vermont for maple syrup; and perhaps Branson, Missouri for theatrical entertainment services. However, if the geographical term is "obscure" and not well-known, or not typically associated with the goods/services at issue, then that geographic term may not be considered descriptive and may be appropriated by one entity.
I strongly suggest that you retain an attorney to run your specific situation by him/her.
Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.
Best to get a trademark registered for your organization. You'll need to either use the mark in commerce, or get an "intent to use"....you're best served by seeing an attorney and paying for work you need done.
I'm not your attorney; my answer to your question includes assumptions. If you want me to be your attorney, I'm easy to find.