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Can two companies have a similar name and/or meaning in a different regard?

Ridgefield, CT |

I am going to use sample names here that reflect the situation i am in.

Say I have a company called HelpBase and we offer IT support. Then a second company XYZ inc has a "BRAND" and not a company called SupportBase and they provide similar services but obviously each company has a unique way of doing things.

They registered SupportBase and I have been working on my project for over a year and nearing launch. If you look at the word meaning, help could mean any kind of help and support could mean "we help you with stuff you need help with".

And they are also using their company name (XYZ) with the brand name so something like: XYZ SupportBase. They are using that in their marketing. Further they don't have a dedicated website they just seem to be using it with existing site.

Further, we have a dedicated domain name whereas they don't. IT seems to me that they are using their website as way to market it, like xyz.com/xyzsupportbase. And it also seems that they have this product or brand built-into an existing product offering and thats why they don't have dedicated domain name. In addition, the class i am filing for is different than the one they are in.. As an example, think of BlackStone and BlackRock. These two are in the same market and offer investment management services.

Attorney Answers 3

Posted

It doesn't sound like there's a "different regard" here, since you acknoweldge the companies provide "similar services." Company names can be brand names, or trademarks, if they're used that way.

Trademark infringement exists when there's "consumer confusion," between competitors using exact or confusingly similar names and the exact or confusingly similar goods or services. Whether the similarity is confusing or not isn't something any layperson is qualified to determine. It takes analysis of the exact names at issue, and knowledge of relevant TTAB decisions and federal court decisions.

The companys' "way of doing things" is irrelevant. So are domain names. Domain name registrations aren't TMs.

It sounds like they beat you to market and have superior rights, but it's not clear. You're apparently not even using the name you want yet, so you have no rights as of yet, and as noted, it remains to be seen if there's confusion.

You need to see your own TM counsel. Asking questions on AVVO won't get you a viable TM.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

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2 comments

Asker

Posted

Thanks, if i am not wrong the USPTO person who will be reviewing my application also does checks to make sure there are no conflicts, no? And I also had some time to think about the example i used above and it seems that the example i gave didn't exactly explain the situation. Nonetheless, like you said i need to begin using it and see what happens. I think we got it.

Bruce E. Burdick

Bruce E. Burdick

Posted

Wow, that's not what she said. She said that before you start use, you should see a lawyer to decide if you should switch. You also need a trademark search to be sure there are not other conflicts, and you need to take a look at the list of 13 factors in my answer and see if you really think you are able to come to the ultimate conclusion. Further, the way out inexpensively may be a joint consent and you have not even addressed that. To get a consent, you nearly always need a lawyer since it will surely be a lawyer doing the negotiating on the other side. Bottom line - DON'T mistake Attorney Koslyn's good advice to say what you want it to say, read it for what it really says.

Posted

You face one of the most fundamental problems in trademark law---whether your use of the trademark could create a likelihood of consumer confusion. Based on the facts that you have set forth, there is a significant likelihood that your use would create consumer confusion. Further, it sounds like your competitor started using the similar trademark long before you, and registered it with the United States Patent and Trademark Office. Trademark rights arise from use in commerce, but registration in a situation like this is also quite important because it may give your competitor national rights. Your competitor is the "senior user" here, and that means that it might have the right to ask a court to issue an order demanding that you stop using the trademark and pay damages for your use.

Note that the fact that your competitor "does not have a dedicated web-site" is irrelevant. What matters is that they have been using it in commerce, registered the mark, and could contend that your use on your project could create consumer confusion. This means, as a practical matter, that you need to use a different brand name for your product.

Note also that there is a big difference between a company name and a trademark. A corporate name is not necessarily a trademark---it is simply a legal name attached to a company. Merely incorporating a company with a certain name does not give you the right to use that name as a "brand" or trademark. Your problem here is that you chose a name and began to develop your project branding without consulting with intellectual property counsel. One of the most critical aspects of starting up any business is "branding"---and developing a branding strategy requires retaining IP counsel to conduct trademark searches and generally advise you on whether you are free to use the names and brands that you want to use. It looks like you chose your name for this project without consulting with counsel---and now you are about to find out that you need to "rebrand". This is going to be a costly mistake---it would have been much more cost-effective if you retained IP counsel to work with you at the time you began your project

I will take this a step further. Any start-up company will inevitably face many significant intellectual property law issues--relating to name, branding, product design, advertising, and many other matters. You will face issues under copyright law, trademark law, patent law, and various state IP law issues. Every company faces these issues---in the internet age this is a fact of life. If you start a new company (or a new project like this for your old company) without retaining IP counsel at the earliest stages, you are making a huge mistake. This should be one of your highest priorities. If you do not have an adequate budget to retain IP counsel in a situation such as this, very frankly you do not have an adequate budget to conduct your business---and your odds of failure will be very high.

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24 comments

Asker

Posted

Actually, i did research and at that point nothing was registered that was similar to my company's name. This company registered their trademark last month.

Asker

Posted

I don't think it will cause consumer confusion. Branding it quite different, our IDEAS mainly are distinguished.

Asker

Posted

Also think of BlackRock and BlackStone. They are similar investment management companies.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Maurice N Ross

Maurice N Ross

Posted

Your research was obviously incomplete which is why you need to retain IP counsel to handle this for you. Also, no offense but you are not qualified to determine the issue of whether there is a likelihood of consumer confusion. That requires a sophisticated legal analysis but If your competitor disagrees with your lawyer it still can sue you. And there is a considerable risk you would use. Helpbase versus support base could be confusing if both companies inhabit the world of IT.

Asker

Posted

No offense but it wasn't incomplete at the time of deciding the name. Like i said, they filed the application last month, i have been working on it since a year.

Asker

Posted

And if we do get sued and i can't hire a lawyer, can one represent oneself on behalf of his company?

Maurice N Ross

Maurice N Ross

Posted

A corporation must be represented by counsel. You cannot represent yourself in this. And your research obviously was not completed. It is not appropriate to limit trademark research to registrations. You need a lawyer for this. If you cannot afford a lawyer you probably do not have the necessary financing for your business. No offense but you have already demonstrated during our dialogue that you have a very weak understanding of the legal problems you face

Asker

Posted

also you didn't make any reference to the example i gave you for BlackRock and BlackStone.

Pamela Koslyn

Pamela Koslyn

Posted

Rights are acquired by USE, not by REGISTRATION. So it doesn't matter how long you've been working on this. IDEAS don't matter in this context (and it most IP contexts). You have some wrong conceptions about TM law, and instead of investing more time and money on the TM you've chosen, you meed to see your own TM lawyer now to see if this even makes sense, since you still have a chance to modify your TM.

Maurice N Ross

Maurice N Ross

Posted

The example you provide--BlackRock vs BlackStone, shows why you need a lawyer. Experienced trademark counsel will immediately recognize that using a color as a preface to a two-part trademark will result in focus by the consumer on the second part (Rock vs stone)---in the trademark application the color must be disclaimed by the applicant. Your example, which does not involve use of a color or other common generic word, is obviously distinguishable. Trademark counsel with experience in this matters and familiarity with case law will intuitive recognize this distinction even if lay persons will not. Parties that engage in trademark litigation often litigate because there are small differences between the trademarks of the parties (I once was involved in a case involving a dispute computer operating systems---windows vs. lindows. While lay person might think the change from windows to lindows was sufficient to avoid commercial confusion, in fact this was a very difficult case that the parties eventually settled. You do not need to use the exact words or phrases to infringe someone's trademark. Consumer confusion can be created by using a similar or synonymous word followed by a "base" word that is more generic or descriptive. In short--you run a substantial risk of infringing the senior user's trademark here, and as I have mentioned several times, you are very foolish if you do not retain IP counsel to guide you through--and you need to listen to such counsel rather than argue with him or her on matters as to which you are, frankly, somewhat misguided and confused.

Asker

Posted

Ok, well i am a young entrepreneur backing this from personal funds. Would you offer free consultation and let me know it it will be an issue? Forgive the ignorance about the fees part since i don't know how lawyers work.

Maurice N Ross

Maurice N Ross

Posted

I offer a one hour free consultation---you have already received more than that from me on this web-site. But you need to know that you need much more than one hour of legal time on a problem such as this. And my guess is you have many other legal issues relating to this project that you have not begun to confront or consider. While I appreciate that you are using personal funds, ultimately you need to have a budget to lay the proper legal foundation for your business, and you you lack sufficient personal funds you need to raise the money.

Bruce E. Burdick

Bruce E. Burdick

Posted

Also, asker, you need to realize that lawyers are not banks. If you need to borrow money for legal services, see a bank not a lawyer, or use a credit card. Legal help is an inherent cost of doing business. If you can't afford it you have to consider whether you can afford to be in business. Attorney Ross has been extremely generous with you. I start charging after 1/2 hr of free consultation.

Posted

You had a statement but not a question. I take it the question is can you register your name and does it infringe. The ultimate question is one of likelihood of confusion. It is a very fact intensive determination. You have hit on a few of the key factors (similarity of meaning, similarity of customers, use of a common word, and a number that are irrelevant. You should not reveal more here, as this site is public not confidential. You need to see a trademark infringement attorney and discuss the specifics. To highlight how complex this is, here is the most widely used list of factors, called the DuPont factors (which were stated in comparing the marks RALLY for car wax with RALLY for detergent:

"In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).

(10) The market interface between applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.

(b) agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks by each party.

(c) assignment of mark, application, registration and good will of the related business.

(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i. e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

That case was settled by a consent agreement, which the court found compelling. Perhaps you and your attorney might fashion a consent agreement with the counterparty in your situation.

L2BL: When you get into a trademark conflict, your first call should be to a trademark attorney. Initial consultations are free and confidential, so why wouldn't you.

So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.

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3 comments

Asker

Posted

Thanks for the details. Will do. But like i said in the question that i am using examples not real names. ANd i think therein lies the problem because the example i am using doesn't exactly address my situation. I will take your advice and see legal counsel. Wouldn't the USPTO also review the application before they go through with it?

Pamela Koslyn

Pamela Koslyn

Posted

No. The USPTO isn't your lawyer, they're basically the judge. And once you apply for a TM, the fees are nonrefundable and you can't change the TM, expand the description, or retract the application. See your own TM lawyer NOW --you can't rely on hypothetical AVVO Qs & As for anything.

Bruce E. Burdick

Bruce E. Burdick

Posted

"Before they go through with it"? If you mean before they take your fees, NO - fees are nonrefundable. If you mean will the PTO examine your application before they register it, yes. The PTO is examining to protect the public not to protect you. So, the Trademark Examining Attorney (as Attorney Koslyn points out, NOT your lawyer) will examine to see if there is a conflict with prior marks or with common words the public uses. But, that is no excuse to not hire your own lawyer. On the contrary, it is reason to hire a lawyer so you have someone who knows how to deal with a refusal to register if such is the response of the Trademark Examining Attorney.