I plan on registering a trademark for an on-line business based in the U.S. for commerce mainly between the U.S. and Brazil. However, when doing my due diligence search, I found that there is one company in Japan that has a similar name for the same on-line services that I plan to sell in the U.S. and Brazil. However, both the similar name I found from Japan, and the one I plan on registering are not yet registered trademarks with the U.S. Trademark Office. I've also searched most state trademark databases and found the name I plan on using is not registered. It is also not registered in Brazil. Should I go ahead and file my application to register my trademark despite my findings on this company in Japan or is there a good chance my application will be denied?
Intellectual Property Law Attorney
Trademarks are territorial, so a trademark used in Japan and not used in the US is available for adoption in the US. If the Japanese mark IS used in the US, as many are due to the US being a major market for Japanese products, then the situation gets fuzzier. So, you can likely get this registration in the US. However, that is not the end of the matter as you want to sell to Brazil under this mark. You want to register in Brazil if you adopt this mark because Brazil has a different system that is based on registration rather than use - the first to register gets there gets the trademark there, unless the mark is very, very famous - and even then there can be difficulties recouping the mark since it involves expensive proceeding with expensive lawyers and takes time that a business selecting a mark cannot usually remain in limbo. So YES, but be fast.
However, you should see a trademark lawyer about perhaps picking an even better and more distinct mark that is not conflicted in this way. For example what happens if the Japanese company does business in the US, say Hawaii, where there is heavy Japanese minority? They might get the mark for Hawaii. What about Canada, say Vancouver? China?, Korea? All potential problems with a conflicted mark. You should seriously consider picking a clean distinctive mark that is easily protected and dropping this one that has your worried. Is it really all that crucial to you at this early stage? Starting on a clean clear sound footing may be more important.
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.
Trademark Application Attorney
Bruce has put his finger on the key issue here. No mark can be registered in the US, and I think abroad as well, unless it is either distinctive or has been used so long by the applicant that people know it is applicant’s mark. Alas, most business owners lean to a descriptive mark, the very opposite.
To help you I am linking a guide to making good, 'registerable' marks.
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.
My colleagues have offered some good info here.
Really, no one can answer the question without exploring all the factors involved. It is true that a mark registered in Japan or Brazil would not have rights here in the US unless it was also registered at the USPTO. But keep in mind that in the US mark holders can have rights under common law and it is quite possible for a foreign entity to enforce such rights here. This will not affect your USPTO application but it may lead to an opposition or petition to cancel.
It sounds like the right time for you to consult an IP lawyer in private and explore a best course of action and have all the proper due diligence conducted (see link below explanation). Most of us here, including myself, offer a free phone consult so you may want to take advantage of that.
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Intellectual Property Law Attorney
You plan on selling your branded product in the U.S. and Brazil. You need, therefore, a trademark search performed that looks for uses in those countries of the mark that you want to use. Then have your own trademark attorney review the results. Perhaps the Japanese company sells its services in the U.S. or Brazil under the mark that you want to use -- but perhaps not. You can know only after a trademark search and evaluation of that company's marketplace presence. So, no, you should NOT apply to register the mark that you want to use until your own attorney evaluates the results of the trademark search he will commission. PERHAPS you and your own attorney will conclude that filing a registration before his analysis is done makes economic and strategic sense -- as a practical matter all you will lose is the registration and attorneys' fees. Good luck.
The above 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.