I want to register retail trade name with the state of New york. My trade name ends with "S". I also own the domain name. After research I found a Chinese company trademarked the name in singular form. The Chinese company is not selling or promoting goods, that has no similarity to mine. But, My company is an ecommerce company.
Based on this, can this company impact my company from legal point of view.
Generally, two trademarks do not have to be the same for there to be trademark infringement, and the difference between singular and plural, by itself, is not typically enough to avoid likelihood of confusion and possible trademark infringement.
However, generally, you should do a US full trademark search which would include at least, USPTO registered trademarks, USPTO pending trademark applications, US state registrations, common law trademarks, and internet domain names to see if there are confusingly similar conflicting trademarks.
You should discuss with an intellectual property attorney in a private consultation.
Many intellectual property attorneys located in the NY/NJ area may have free initial telephone consultations.
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I would need much more information before I could advice you. Even if the Chinese company is not selling goods similar to your products, you could violate its trademark rights if your use of the trademark could create consumer confusion. This is a very fact-intensive issue, and none of us can give you definitive answers on this web-site. If you want to pursue this matter, it is necessary for you to retain legal counsel. Good luck.
I am not your lawyer and this is not intended to be legal advice on which you rely. My answer is merely intended to assist you in understanding some of the issues that you face so that you can make an intelligent choice when you hire legal counsel.
Generally an "s" to pluralize some word won't be distinct enough and would still be infringing.
But: trademarks are territorial. A trademark registration in China won't necessarily affect a U.S. trademark registration.
But: the territory could reach to the U.S., if it's an online seller.
But: your concerns are not just this Chinese company. Your concerns are with any company anywhere that uses the same of confusingly similar name and sells the same or confusingly similar retails goods as yours.
You're not qualified to research availability. There are lawyers who do "knock out" searches, and professional search companies that search everywhere for everything to root out potential conflicts (and even foreign translations with unintended meanings.
Hire counsel. It's actually been researched, and trademark applicants who use lawyers have better odds of getting their applications approved.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
Ignore the 's'. An attorney would need to compare the goods and services between the Chinese company and you to determine if there is a conflict.
If any trademark owner ceases to use the mark, it can be deemed abandoned.
Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NY secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.
It depends because there are multiple factors that impact whether you can register a business name or obtain a federal trademark protection later on. Trademark in China may or may not impact your trademark in USA because trademarks are "territorial" in nature. If your goods are limited to USA, and you do not conduct business in China then that is a factor going towards your way. However, the Chinese trademark owner may be selling goods in USA similar to your goods. If this is the case, then the Chinese trademark owner may have tried to obtain a trademark in USA as well.
You need a comprehensive trademark search and opinion from a trademark attorney. Since, you are selling goods through an e-commerce website, there can be an argument that your e-commerce site is not limited to USA. Using a business name (in USA) with an added plural "s" to another trademark registered in USA will have greater chance of likelihood of confusion if the trade channels are similar. More analysis need to be done with help of trademark attorney. Hire a trademark attorney.
The response is general in nature and cannot be construed as legal advise. If you would like to have legal advise, then please consult any competent attorney privately to discuss your case and establish proper attorney-client relationship. I only work through my website https://affordabletrademarkattorney.com/
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