I want to register a trademark but I'm not sure if I will be infringing.
5 attorney answers
Common Law rights must be considered when clearing your trademark. With that said, it is very important for you to consult with a Trademark Attorney who can properly advise you on the level of risk you are facing (low, moderate, high) prior to submitting your application.
The United States is a “first to use'' country. This means that the first person to use a trademark, even if unregistered, may have superior legal rights to use that mark in a certain geographic location. Also, filing a Trademark Application may result in a cease and desist letter and/or potential trademark infringement lawsuits, damages and attorneys’ fees resulting from claims or oppositions by other senior owners that have NOW been put on notice, as a result of your new Trademark Application.
This is why my colleagues above have discussed the importance of a Full Comprehensive Clearance Search, usually these are commissioned through a specialized trademark research company who looks more broadly at similarity of marks and products ( not just identical marks), and also looks at state trademarks and trade name registrations, unregistered common law trademarks, internet domain names, and other possible sources of prior trademark usage by other parties.
Further, it is also important to do your due diligence because the USPTO will require you to include the following verification statement with your application. “the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive.”
Trademarks are tricky and a lawyer's input is crucial. You don't want to get in a trademark war as a start-up.
There will be other questions you find as you seek to open an e-commerce web site or App. In my experience, working with a lawyer as you begin will save you a lot of money in the future.
I have written a legal guide on this site with issues you will need to discuss with an Internet attorney. I have placed a link here for your convenience: https://www.avvo.com/legal-guides/ugc/legal-steps-to-opening-a-new-e-commerce-website-app-or-blog
You may want to discuss your situation with a lawyer in more detail. Many lawyers on Avvo offer a free phone consultation.
This post is provided for general informational purposes only and is not intended to be legal advice specific to you. This general information is not a substitute for the advice of an attorney in your jurisdiction. The attorney client relationship is not established by this post.
The competitors you already know about are worrisome, but perhaps not prohibitive.
But you haven't really done a "knock out" search to clear the name, so there could be other conflicting users. And it's not just exact matches you need to avoid, it's also confusingly similar names.
The right way to apply for a trademark is to consul;t counsel for help. About 1/2 of all USPTO applications get rejected, the USPTO fees are nonrefundable, and a trademark is often the most valuable assets a business can own, so it's best for to invest in your business and not try to DIY this important decision.
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.
My colleagues have given you sound advice. The complete answer depends on how valuable the Trademark would be to you. If it is really catchy and would help your business really grow/take off, it would be worth having an experienced TM attorney do the TM search to find out if you can TM it. Only you (and your friends who know your TM) can estimate the value of your TM.
Peace be with you, and may love guide you.
You've done some good background research. It's possible what you found was never used as a trademark, has been abandoned, or, since you don't describe the goods, might be different enough there would not be a likelihood of confusion in the first place. Trademark rights exist based on use as a trademark. A Facebook page or domain name doesn't create trademark rights without more -- they might be tools to sell products if the products themselves have the trademark on them. You need to put together a business plan and time line. Could you file an Intent to Use trademark application and get it allowed and then put your product on the market? Sure. Maybe you don't want to wait. Maybe your research hasn't turned up potentially blocking registrations. Maybe a non-trademark Facebook page would nevertheless be blocking, or it might go away as abandoned, like a trademark might be. Most important is what the marks and goods are. Retain a trademark lawyer.
This is public information not legal advice. For confidential consultation email [email protected] Please read he whole disclaimer, click More. This answer is written to explain situations which may come up involving intellectual property law issues. It does not give specific legal advice about specific fact situations. If you have a specific fact situation in mind you should ask for professional legal advice about the relevant facts. Seemingly minor changes in facts may change a legal opinion dramatically. Space here does not permit an explanation of all the variables in complex legal areas. Dave Brezina is an Illinois lawyer and his profession is regulated under the authority of the Supreme Court of Illinois. Although he represents clients nationally and internationally, his law practice is performed in Illinois and is not subject to regulation by other states. Dave Brezina is also a Registered Patent Attorney and a patent practice is regulated by the US Patent and Trademark Office a Federal agency and is not subject to regulation by the states. The firm, Ladas & Parry, LLP, has attorneys admitted and offices in at least Illinois, New York and California. Finally, do not post confidential information. There is not an attorney client relationship created simply by correspondence or communication with the author of this site.