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.
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.
1 found this helpful
1 lawyer agrees
Intellectual Property Law Attorney
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.
1 lawyer agrees
Intellectual Property Law Attorney
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.
1 found this helpful