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Can I use a name for a clothing site that's already taken?

Brooklyn, NY |

I would like to use a name for a site but there is a clothing store with the name and they have the physical location and the domain. They are not selling online but I will be selling online. I will tweak the domain by adding "the" in front of the name. They are in another state also. Is this legal? Thank you in advance.

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Attorney answers 6

Posted

No. That would be inviting a lawsuit. Use your creativity and come up with something truly original.

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.

Posted

I agree with my colleague:

What you want to do is what trademark law was designed to prohibit.

This information does not constitute legal advice and does not establish an attorney-client relationship.

Posted

Attorneys Doland and Schultz are right on point.

It's time to go back to the drawing board and come up with another identity for your business, so that consumers will be able to distinguish it from the existing bricks-and-mortar store that you are aware of.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. Do consider marking selected Answers on this forum as Helpful, and one as a Best Answer. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com

Posted

You should hire an attorney to help you through this process. An attorney can help walk you through what is called a "top line" search to better clear your trademark, a full search if you are willing to incur a larger fee and can then help you file with the USPTO for trademark protection.

It looks as if you want to sell goods on the internet and clearing your trademark and then obtaining a federally registered trademark will further protect the name you choose and the goodwill you will create.

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Posted

I agree with others. the big question here is why invite a problem? I mean, you are free to take a chance that they will do nothing to police their marks and enforce their rights, but that is a big chance if not calculated effectively.

Further, whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you 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. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark.

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 phone consultation, get some insights then pick the best fit to work with.

Best regards,
Frank
Natoli-Lapin, LLC

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-Lapin, LLC on the basis of this posting.

Posted

Trademarks are designed to avoid consumer confusion by identifying the source of goods and services. The issue here is whether your use of this name could cause consumer confusion. On the one hand, it appears your web-site does not directly complete with this store, which according to you operates only in another state and does not sell goods on line. Certainly these facts tend to suggest that consumer confusion might be small. Nonetheless, without knowing more facts, I cannot conclude that there would not be a likelihood of consumer confusion----especially if this store has a registered U.S. trademark for the name, there is a significant possibility here that the store could send a cease and desist letter and demand that you case using the name. By the way, merely putting
"the" in front of the name will not solve the problem. In a situation like this, you are probably better off choosing a different brand name, and when you do so, you will need to retain IP counsel to conduct a trademark clearance analysis. Operating an e-commerce web-site without retaining IP counsel is profoundly irresponsible and will inevitably lead to big trouble.

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