Active TM, Different "categories", Not produced since 1970s

[JayLok]

I am in Florida. Let's say, for example, Sears Holdings has an active Trademark (using Trademark 411 to verify, among other services) on the name IntelliTrend (or any combination of words). They have owned this trademark since about 1950, but it has not been used since the 1970s, it is still an active trademark says USPTO, however.

"IntelliTrend" trademark, owned by Sears Holdings, is under a completely different category of goods and services and my trademark/business/brand would never be competition for the same goods/services provided by "IntelliTrend" by Sears Holdings. It also says "Today, 'IntellTrend' is a brand name used by This Corporation and was endorsed by XXXXXX of XXXXXXX from 2003 to 2006." on wikipedia.

The state says I can register IntelliTrend, LLC. and use IntelliTrend as my brand, legally and for all my goods and services. It is not registered.

What I would like to do, legally, without being sued or prosecuted:
Use IntelliTrend (this is again, just an example name) as my brand, my company, etc. possibly have subsidiaries under this company as well in the future like IntelliTrend Games (or what-have-you) which will also be part of the parent company.

 

[quincy]

. . . .
What I would like to do, legally, without being sued or prosecuted:
Use IntelliTrend (this is again, just an example name) as my brand, my company, etc. possibly have subsidiaries under this company as well in the future like IntelliTrend Games (or what-have-you) which will also be part of the parent company.

There is no way to prevent someone from suing you. There are only things you can do to reduce the risk of a lawsuit.

One thing you can do to reduce your legal risks is to come up with a completely unique trademark for your company.

Another thing you can do to reduce your legal risks is to have your plans reviewed by an attorney in your area prior to implementing any of them.

Good luck.

 

[JayLok]

I see, so basically it would be an infringement. Even though there are other companies who have used the trademarked name in their own company name. The thing is that we're talking about a brand name for a product vs using it as a legal business name.

 

[quincy]

I see, so basically it would be an infringement. Even though there are other companies who have used the trademarked name in their own company name. The thing is that we're talking about a brand name for a product vs using it as a legal business name.

"So basically it would be infringement?" Well, it depends.

If the current trademark holder believes your use of the same or similar name infringes on his rights or confuses consumers into believing you are them, then you could find out if it is infringement or not when a court is asked to decide the issue.

Most people want to avoid court challenges because there is always a very real chance they will come out the loser.

It is, in other words, a risk to use a name for your business, product or service that you know in advance already exists. How big the risk is will depend on all sorts of things. Two or more businesses can (and often do) peacefully coexist using the same or a similar name, generally if they operate in geographically separate areas or their businesses, products or services are in substantially different classes (for example, one deals in floor coverings and one in medical apparatus).

The name on a product or a service may not differentiate it much from that same name being used as a business name. It could make no difference. I cannot name my doughnut business Microsoft, for example, just as I cannot name my doughnuts Microsofts - at least, I can't without legal risk.

JayLok, what you can and cannot use safely as a trademark really requires a personal review of all of the specifics. If you create your own unique word to use as your business identifier or to identify your product or service, and/or if you go over all of the facts of your business plans (including trademarks) with an attorney in your area, you have a better chance of avoiding potentially costly legal conflicts.

Good luck.

 

[LdiJ]

Let me give you an example of how a trademark case could go....

Names have been changed to protect the innocent...LOL

I worked for a small corporation for many years. They had used the name XYZ corp and had it registered for over 12 years. A foreign corporation, with lots of money with the name XYA corp decided to break into the American market and they were marginally involved in the same industry we were involved in. The foreign corporation challenged our name and trademark. We won the case but it cost our small corporation about 30k in legal fees to win...which was hard on us.

Do you have 30k or perhaps a lot more, laying around to fight a trademark case? Is the name important enough to you to spend that kind of money to defend it? If not, choose something totally unique.

 

[JayLok]

Quincy,

Thank you very much for your contribution to this thread. This was very helpful and indeed has changed my whole perspective on the situation at hand. I've developed multiple business names for many others as a freelancer but my own company was very difficult. Now I know the best thing to do is come up with a unique identifier for my business, such as a name or word that does not exist.

Thanks again!

 

[quincy]

I believe that if you want your business to be unique among all others, it deserves a unique name. And it is legally safer, too, which is always a big plus.

Thanks for thanks, JayLok. Good luck with your business.