I want to start an apparel company, but when I did a quick research to see if the name was available on google, I found another company in a different state that sells candles. The company seems to be out of business for a few years now, but I just wanted to make sure. In reality I don't even know if they registered the name in their state, looks a little like a mom and pop... Can I use the same name or can I get in trouble?
Neither names, nor goods and/or services, need to be identical to infringe; a likelihood of confusion is enough.
Selecting a viable and available trademark is not a DIY job, it needs professional work. This maybe-out- of-business candle company in another state is only 1 fact among many facts that should be considered, like exactly what goods and/or services you'll be selling, and what else is out in commerce nationally in the same (or confusingly similar) goods and/or service sectors.
So no one can comment on your risk without doing a much more comprehensive "knock out" check of the name you'd like to lose, after a consultation with you discussing all the details. See your own IP lawyer for help.
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.
There may be at least, a trademark dilution concern for famous trademarks even if in a different industry.
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.
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When the goods or services are in very unrelated industries there is much less chance for any confusion. For example, we are not confused as between Delta Airlines versus Delta faucets.
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 CT 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.
This is most likely not going to be an issue, as it is very unlikely that a consumer would be confused between products from two such different industries. Still, you should speak to an attorney confidentially and discuss the specifics before getting too invested in the brand.
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