Is it trademark infringement if you have the same name but a different service?

Answered April 06, 2010 10:37. The legal standard for trademark infringement is addressed in statute 15 USC 1114(1)(a) as whether or not the use of two marks creates a "likelihood of confusion" among the consuming public. Several factors are analyzed to determine likelihood of confusion. Each situation is different and provides unique facts, therefore, no single factor will completely determine the answer and some factors may be stronger than others. The factors evaluated are:

-Do the particular goods or services using the same mark compete? The more competitive the products or services, the more likely the public will be confused.
-Are the goods and services marketed with the same channels of distribution? If the public an buy both seller's products from the same or similar vendor, the public may be more confused.
-Would you, as a potentially alleged infringer intend to benefit from the other trademark user's "goodwill" in the marketplace? Intentional/Wilfull acts increase the court's opinion to that of a likelihood of confusion.
-What is the similarity of the sound, appearance, interpretation of each mark? The more similar they look and sound, the more likely they are to be confused.
-How sophisticated are the potential customers? More advanced customers are usually more careful during purchase. So, it the product or service is very expensive, the potential customer may be more scrutinizing and thus the likelihood for confusion may be lessened.
-Do the two marks intend to sell to similar groups of customers? If they do, there may be more likelihood for condusion.
-Considering the "distinctiveness" of the mark, how strong are the marks in question? The stronger the mark, the higher the likelihood for confusion by another similar mark.
-And, whether or not there has been any actual confusion between the two marks already? If you have received communication from consumers thinking they are calling the other user, there is a clear confusion. And vice versa. This is one of the strongest factors in determining likelihood of confusion.

So, when answering your question, these factors should be considered. Without knowing more facts, I cannot provide you a more concrete answer to move forward.

However, even if you determine that confusion is unlikely using a third party's trademark can create liability under state or federal dilution standards. This consideration is also fact specific.

I am in Atlanta near Suwanee and am available for assistance through my Avvo page. Good luck.

Answered April 06, 2010 10:50. If an individual owns the rights to a particular registered trademark, that party may prevent subsequent users from infringing upon their exclusive trademark rights. The standard for infringement is "likelihood of confusion." To be more specific, the use of a trademark in connection with the sale of a goods or services constitutes infringement if it is likely to cause consumer confusion as to the source, sponsorship or approval of such goods or services. Here, additional information will be needed to determine the full extent of goods or services associated each trademark use, as well as dates of first use.

There are many complex factors that must be determined as to the validity of a Cease and Desist demand letter, so I would advise that you consult an experienced Intellectual Property attorney to resolve this matter and prepare a trademark application on your behalf.

COMMENTS MADE HEREIN ARE NEITHER LEGAL OPINION NOR DO THEY ESTABLISH AN ATTORNEY-CLIENT RELATIONSHIP.