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I have a business name that i want to use but it has been trademarked can i use it if the content I'm selling is different ?

Bronx, NY |

Say for instance, there are two businesses with identical names, but with completely different concepts, can i still use that trademarked name without having legal issues?

Attorney Answers 4

  1. Best answer

    Maybe. The issue is whether your use of the trademark would cause consumer confusion. That depends on many factors, including the products are services of the two users, the strength of the trademark, the geographic location of the proposed uses, whether the two companies compete for the same customers, and many others. There are many examples of concurrent uses by two companies of the same trademark that do not lead to consumer confusion. On the other hand, if a trademark is extremely famous (coca-cola, budweiser, Mickey Mouse etc), then almost any use might cause consumer confusion. The devil is in the details.

    The branding decisions that a small business makes are among the most critical decisions that the company will ever make. This is not the time to save your pennies---rather, you should retain experienced IP counsel to work with you. IP counsel typically perform a clearance analysis which is designed to analyze whether your use of the trademark will violate rights owned by third parties. Without commissioning such a clearance analysis, you would be taking a huge financial risk---I cannot tell you how many times I have had to clean up a mess caused by a businessperson who did not retain IP counsel at the time he made his branding decisions. Your investment in a proper clearance analysis by IP counsel will be substantial financial dividends in the long run,

  2. This may depend upon whether the trademark is famous, which would may extend the trademark holder's rights beyond its scope of use. Since this requires a fact-intensive review by someone experienced in this field, I would recommend talking with a trademark attorney. It is otherwise too difficult to answer this question based on the limited facts provided.

    This is not to be construed as legal advice, and I am not your attorney, A conflict check and engagement letter would necessarily be required before any retention or attorney/client privilege exists.

  3. So generally, yes. Think of Delta Airlines vs Delta faucets. Same name but very different goods/services.

    My colleague noted aptly that famous marks have greater latitude and can make what we call "dilution" arguments. While they do not always win the day, they can ceratinly litigate a small/new company out of business so you always have to weigh very carefully what you are doing. For example, it would not surprise me at all if you were selling your new car model under the TM "Big Mac" that you would hear from McD's lawyers even though they do not sell autos.

    The trademark clearance and due diligence process will need to be conducted in any event so if it appears that your mark will pose a probelm, for example, we would bring that to your attention right away if you were our client as would any good TM lawyer.

    I will link you to some helpful general info below and advise that you follow up with a TM lawyer in private before making any investment in your mark. Most of us here, including myself, offer a free phone consult.

    Best regards,
    Natoli-Lapin, LLC
    New York, NY
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

  4. The issue is not whether the senior mark is registered but whether it has been in use. And I agree with my colleagues that a famous mark with ‘secondary meaning’ will make a difference.

    About 20 years ago there was a small I think Philippine restaurant in downtown Baltimore called Sony’s. The electronics company sent a cease and desist. “But it is my name; I am called Sony.” Long story made short, the 4th Circuit Court of Appeals affirmed a judgment for the electronics company, because it showed its famous mark would be diluted by continuation of the small restaurant with the same name. Personally, I thought it was as immoral as it was legally correct, and would not buy Sony gear for years. So famous names rule.

    For a less famous name being in a different industry, though, does make a difference, because the likelihood of confusion is less. There are rules for interpretation, but in the end an experienced and intuitive TM attorney can steer you to the best way to brand your stuff, get registered, and not spend years getting there.

    Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.