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Trademark Name - Same As Already Registered By Other Company BUT In Different Order? Is It Acceptable?

New York, NY |

I am preparing to launch my Online Marketing / Consulting Business and the name i like is "Marketing Next" and the domain would be MarketingNext.net / MarketingNext.org

The most obvious domain MarketingNext.com is taken by someone else and that person is not using is since 2004 but never been used till date.

The term "Next Marketing" is already been registered by an event management / marketing company in US and the website is NextMarketing.com

Can i apply for "Marketing Next" term and get the domain and start business on this name?

I will highly appreciate your help.

Thanks

Attorney Answers 7


  1. Avvo gives analysis, not legal advice that you can rely on.
    The criterion is deceptively confusing in the relevant market. Switching the order of the words does not appear sufficient.
    Total originality, not descriptive terms, are your best approach.

    The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.


  2. The question as to whether your mark would be allowed boils down to whether it is "confusingly similar" with a mark that is already registered and in use. From your description it sounds like there is at least 1 other company out there that might argue that your proposed mark violates their rights. I'd retain a good trademark attorney who can further advise on this issue.

    Legal disclaimer: The answer provided above is for general information purposes only and should not be relied on as specific legal advice. This answer does not form an attorney-client relationship. You should consult with an attorney of your choice to fully advise you about your legal rights and obligations.


  3. Q: "Can i apply for 'Marketing Next' term and get the domain and start business on this name?"
    R: No attorney can say one way or the other without first performing a trademark clearance search and conducting an analysis of the results. Properly clearing the rights to your branding is a critical business chore that's required before starting the business. 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.


  4. I have to agree with all my colleagues on this. No one can say as any TM lawyer will first conduct the proper due diligence (see link below on this topic) under both federal and common law before filing an application with the USPTO. It is important to know that common law mark holders can and do file petitions to cancel against federal registrants.

    I suggest you reach out to a few TM lawyers and get a sense of how they might help and charge, etc and discuss your mark in private. Most of us here, including myself, offer a free phone consult and I too am in NYC.

    Here is a great explanation of why hiring a lawyer to assist with your trademark can really make a big difference:
    http://blogs.wsj.com/law/2013/04/10/when-it-helps-to-have-a-lawyer/

    Best regards,
    Frank
    Natoli-Lapin, LLC
    (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 Support@LanternLegal.com 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.


  5. Actually, the legal measurement is whether you mark is likely to cause consumer confusion. The focus of the trademark law is on what the consumer sees. The law presumes that if a consumer sees a good or service that is similar or related to another good or service, and they have identical or similar names, that the consumer will be confused. In that case, the prior user wins. The question here is: why do you want a similar name? If it is to describe your services, avoid that as it will be difficult to register and hard to enforce. If it is to capitalize on an existing mark's goodwill, don't do that at all unless you like litigation: in a dispute: they will find out you knew about the previous mark and adopted a confusingly similar mark anyway - which could be indications of deliberate infringement and bad faith (get out your checkbook). Bottom line: get a good, experienced trademark attorney to help you select, register and protect your marks - it is worth the investment.


  6. By reaching out for answers before spending time, money and effort on a business name and brand that may or may not work puts you way ahead of the curve as an entrepreneur. I would suggest you work with a dynamic business and trademark attorney with prior marketing experience to help guide you through your dilemma. There are many of us around and available for free consultations.

    WINTER LLP Is Changing The Way Legal Gets Done. WINTER LLP Offers Flat Fee Trademark, Copyright, Corporation and LLC Packages. Please contact us today for a free consultation. Any information provided by WINTER LLP or Todd Winter is provided generally and does not create an attorney/client relationship. If you would like specific legal advice, you must retain us directly.


  7. You should not be using a web-site like this as a substitute for legal advice. This web-site exists to match attorneys and lawyers----it is not intended as a substitute for retaining counsel.

    I can see by your question that you do not have even a basic education regarding intellectual property rights. Changing the order of words in a phrase, or using the same phrase with a .com rather than a ,net in a domain name, is almost never sufficient to avoid allegations of trademark infringement. Indeed, if you think this is even remotely possible, then you are sadly and profoundly uneducated about the basics of IP law. I cannot fathom how anyone could purport to go into an on-line marketing/consulting business with such an obviously deficient understanding of basic concepts in IP law.

    Your first step should be to read a bunch of articles and books on the basics of copyright, patent, trademark and unfair competition law---particularly as these areas of law apply to marketing and advertising, You might also want to take a course in the basics of IP law for business (I recently lectured in such a course at the business school of Columbia University---these bright, intelligent future business leaders understood how crucial it is to become educated in these basic concepts).

    Your second step should be to retain legal counsel to assist you in laying the proper legal foundation for your business, You cannot possibly launch a business such as this in a responsible manner without retaining legal counsel to assist you in addressing the many intellectual property, privacy law, internet law, FTC and state regulatory issues that you will face. Anyone going into a business like this will need IP/business counsel on retainer (and on speed dial). If you think you can do this without legal counsel---you are not ready to run this business.