This business is a pizza delivery shop that only opened several months ago in the US. They recently took an interest in wanting to expand their online presence. In doing so, they have discovered that their business name is the same as a relatively large and seemingly successful chain of pizza restaurants throughout Europe and Asia. That chain has no US shops, but being that the online world tends to transcend borders, I believe there may be reason for concern.
Is there an issue here? If so, what would you suggest they do?
You state that the pizza delivery shop only opened "several months ago".
Is this pizza delivery shop going to be a local, one location pizza shop, or are there expansion plans to become the next "Pizza Hut" or "Papa Johns"? Are there plans to expand internationally?
Particularly if you have plans to expand (and even if you don't have plans to expand) you may want to think about changing the name, because if the other pizza business is "relatively large", they may have already taken steps to expand into the U.S. that you are not aware of, and/or there may be online confusion created by the common names.
You should discuss with an intellectual property attorney in a private consultation.
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I am changing the Practice Area so that your question might be answered by Intellectual Property Attorneys.
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Hi. There are international treaties in place that could be brought into play if the foreign entity want to enter the U.S. At this time, the U.S. owner needs to contact counsel and determine if a U.S. trademark can be filed. You should tell them there are many attorneys here on Avvo that will give a free consultation.
It only becomes an issue if you sought to compete with them in the markets that they were already operating in. The fact that you share a name and both can be found online is not enough. If they are in the EU and Asia, but not in the US then it is not an issue. But keep in mind that in common law jurisdictions like the US, registration is not required in order to demonstrate rights to a trademark. So for example their main business might be pizza shops and they may have none in the US, but they may also be selling prepared foods over the internet and to US customers in which case they might claim use here at least with respect to some goods and services. This is why the clearance is critical before you start investing in a trademark.
Before you invest in any trademark make sure you get some legal guidance. 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 NJ 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-Lapin, LLC on the basis of this posting.
It depends on many factors. If you have plans to expand then you may run into issues. Perhaps they could add another word to the mark to make it their own, lest the foreign chain want to expand into the US.
Acquiring trademark rights in the US requires using the trademark in the US. If the other company is not operating in the US, then they are unlikely to have rights in the US. However, you should be aware that, under the Madrid Protocol, if the other company filed a foreign trademark application, and then files a Madrid Protocol application naming the US within 6 months, they are entitled to their foreign application filing date in the US
Regarding the Internet, the fact that two businesses that are not competing in the same market have websites with confusingly similar trademarks does not, in the absence of other factors, amount to trademark infringement. Courts recognize that a website is a ncessity of doing business, and do not regard the Internet as a geographic region wherein one can acquire exclusive rights by being first.
The bigger concern is the likelihood that others who are already in the US have begun using the name, or perhaps the company you do know about has a US presence that you have not yet discovered. As others have mentioned, a full trademark clearance search is a wise first step prior to beginning use of a trademark. Since you have only been in business for several months, it remains a wise step. If the results are favorable, early federal registration of your trademark will preserve your rights in the US.
Prior answers are correct. I would suggest that they should see if they can register the mark in the US, or if they are local, in the state in which they are doing business. If the other entity decides at some point to move into the US, the local shop may be able to keep them out of their sphere of business or, if they want, negotiate a sale or license of the name.
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