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How distinguishable does a name need to be so it is not infringing on another trademarked name?

Saint Marys, GA |

I have a business and am being told by another business from another state that I need to stop using my name because they have a federal trademark that no one can use their name in any business name. For example (names are being changed for privacy): Smith Photography is the supposedly trademarked business. My business is Susie M. Smith Photography. Smith Photography is claiming I cannot use "Smith Photography" within my name by protection of trademark. Do I need to change my name or is it distinguishable enough to be within my right to use? Note: I have searched the US Patten and Trademark Office database and they are not listed at all. I have also requested they send me documentation of trademark of Smith Photography.

Attorney Answers 4


  1. There are many, many factors to consider when evaluating whether one trademark is confusingly similar to another. For example, personal names are a special case. For the legal issues, you need to consult with a trademark attorney for advice. For the practical business issue, you need to consider which is cheaper -- to fight, or to choose a new name. Many business owners find that a new name, while costly, can be a boost and actually attract new customers; change is not always bad.

    This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.


  2. My colleague has already ably answered your question. I write only to suggest that you read a court decision via the link below that explains the law, as applied in your part of the country, that would apply when resolving your dispute with the other business. You should discuss this matter with your own Georgia-licensed trademark attorney. Good luck.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  3. You require a specific legal analysis and actionable legal advice, not general hypothetical advice, so this platform is really not going to be very helpful to you in this situation.

    Do not agree to anything with them until you receive such advice and frankly I would avoid saying anything until you consulted your own lawyer.

    You may have very good defenses and for all we know you may hold more cards then them, but the devil is in the details.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.


  4. If the other company is well known, such as Olan Mills www.olanmills.com then you cannot legally adopt Susie Olan Mills Photography, even if Susie Olan Mills is your name. If the name were a super common surname such as Smith Photography, you should be able to use Susie M Smith Photography and have your IP lawyer send Smith photography a refusal letter explaining why they have no right to stop you. That letter should be written by an IP lawyer so it has some legal substance to it and is credible. If you write such a letter yourself you will exposing yourself as unrepresented and thus an easy target. My guess is you are somewhere in between the two extremes and so a trademark lawyer needs to review this and advise you.

    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.

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