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Can I trademark the same name if the goods are different?

Knoxville, TN |

I want to register a trademark, but when I searched for it, there was already another trademark with the same name. However, my trademark would be registered for clothing, whereas theirs is for sound recordings featuring music; video recordings featuring music; pre-recorded CDs, audio tapes and DVDs featuring music and music entertainment; downloadable audio recordings and downloadable audiovisual recordings featuring music via global computer network and wireless devices. Would there be a problem with registering it?

Also, I was wondering if I added "Clothing" to the name if that would help differentiate the two if I wasn't able to use the first name. Thanks.

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Attorney answers 6

Posted

For close questions, you need to hire an experienced trademark attorney. In general: the more popular the registered mark, the more likely it is that its owner will send you a cease-and-desist letter and/or oppose your mark if you seek registration. Even if your mark is on different goods, and your consumers are not confused, the act of using a popular trademark sometimes suggests to consumers that there is some affiliation, endorsement, sponsorship, or other relationship between your clothing goods and the brand-name music goods. For example, if you saw Nike Airlines, what would you think?

This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.

Bruce E. Burdick

Bruce E. Burdick

Posted

Yes indeed, such is the nature of actionable trademark dilution, because trademarks serve two purposes: (1) to safeguard consumers against deception and (2) to safeguard trademark owners against theft of goodwill.

Posted

Mr. Anderson gives a great answer. You can get analysis but not advice on Avvo.

Where it is a close call, the personality and philosophies of the client and the attorney come into play. I would prefer complete originality to permit the client to focus on the business plan, and for many reasons. I believe that if the product or service merits it, it will sell given almost any name, and no name will sell an inferior product or service.

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.

Bruce E. Burdick

Bruce E. Burdick

Posted

And, if you can use a mark that close to the other mark it is likely other people can get even closer to your mark. Just as the other mark will get greater protection the more distinctive it is, so will your. Attorney Doland is giving you sage advice - different is better for a second comer in trademark law and the more different, usually the better.

Posted

You are asking the appropriate question, but as my colleague pointed out, you need to consult a TM lawyer in private to conduct the proper due diligence on the mark under both federal and common law (see link below for more on this topic) if you are to receive proper advice.

That said, adding the word clothing does nothing and you may not want to commit to using the mark that way. If they are in a very different class of good/service this will likely not be an issue regards to your USPTO application (think of Delta Airlines vs Delta faucets), but the mark holder does not have to agree with the USPTO Examiner's assessment and they are always free to oppose your application, petition to cancel later or just send you a Cease & Desist and possibly file a legal action all of which can be a business-busting proposition later. Further, if the other mark is a very famous mark they can always seek to take you out under a dilution argument. For example, I don't care what you make or offer if you call it the "McWhatever" you can expect to hear from McDonald's lawyers.

I would discuss your situation in more detail with a lawyer in private and most of us here, including myself, offer a free phone consult.

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. 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.

Posted

One point not directly mentioned by my colleagues is that it is very often true that a mark used to brand music-related goods is also used to brand clothing. Just because the mark owner has not registered the mark for clothing does not mean it does not use the mark to brand clothing. Even if unregistered, such use would preclude you from lawfully branding your clothes with that mark. Speak with your own trademark attorney. Good luck.

The above response 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.

Posted

Sounds to me like that would be a dumb move on your part. It is routine for rock bands to register their name for clothing since they sell a ton of T-shirts. It is routine for any country singer to register their name for clothing since they sell a ton of T-shirts. It is routine for any movie actor to register their name for clothing since they sell a ton of T-shirts. It is routine for any TV star to register their name for clothing since they sell a ton of T-shirts. It is routine for any sports figure to register their name for clothing since they sell a ton of T-shirts. The point is there certainly is likely to be a problem. In fact, it is more likely there will be a problem than not a problem. Plus, someone with a brand name for music entertainment is likely to have Beaucoup bucks and for sure enough to bury you in legal fees. Unless you have a death wish you do not want to take on an entertainment mogul or celebrity.

Example, suppose your mark is Simon Cowell and you find that the only registered SYCO for the music he has sold (over 360,000,000 albums and counting) so you get the bright idea to register SYCO for clothing. You think that if you add the generic term "clothing" so your mark becomes SYCO clothing, that that is going to make a whit of difference? Not a chance. Your brand will last perhaps a month until you get hammered into oblivion. You think he is mean on TV, try that and see how mean he is.

I have to be snarky and say your idea is like a Bat Out of Hell (it will be gone before the morning light) and Meatloaf also won't let you do that or that or that. Don't do anything for love, do something totally different and you will be a lot safer. Might not sell as much, but legally it will help prevent you from spending as much.

If any of this seem nutty or unclear, you need to consult an IP attorney or entertainment attorney. We offer free initial consultations and we don't bite (unless you try this sort of stunt on one of our clients.)

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.

Posted

I agree with most of the answers given so far, but if you are attached to your trademark, you might want to do some additional investigating. Not only is it possible that your goods are sufficiently different, but it is also possible that the existing registration is vulnerable to challenge (which may decrease the chances of receiving an objection from the trademark owner). The analysis is very much fact base, so I would suggest talking to an experienced trademark attorney.

Kenneth Bruce Fenelon

Kenneth Bruce Fenelon

Posted

I'd recommend that the asker speak with someone like Kelly. There are a lot of intellectual property lawyers out there, but its important that the asker finds the appropriate kind. In this field its less important to find someone near you, but rather look for someone with experience in the specialty.