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

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

New York, NY -

Attorney Answers (7)

Michael Charles Doland

Michael Charles Doland

Intellectual Property Law Attorney - Los Angeles, CA
Answered

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... more
Eric J Camm

Eric J Camm

Business Attorney - Seattle, WA
Answered

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... more
Frank A. Natoli

Frank A. Natoli

Intellectual Property Law Attorney - New York, NY
Answered

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-hel...

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... more
Daniel Nathan Ballard

Daniel Nathan Ballard

Intellectual Property Law Attorney - Sacramento, CA
Answered

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... more
Maurice N Ross

Maurice N Ross

Intellectual Property Law Attorney - New York, NY
Answered

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.

Paul C Jorgensen

Paul C Jorgensen

Intellectual Property Law Attorney - Washington, DC
Answered

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.

G. Todd Winter

G. Todd Winter

Trademark Application Attorney - Costa Mesa, CA
Answered

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.

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