What is the name of your state (only U.S. law)? California, United States
This scenario is an example:
If a company has trademarked the brand "slowmocup" who makes/distributes a special kind of cup for syrups, am I allowed to use the term "slowmo" for my syrup company and call it "slowmosyrup"? They are producing cups and we are producing syrups. Is there any legal concerns with the similar naming?
Any legal advice would be highly appreciated. Thanks!
A trademark is used to identify the goods or services of a business and works to distinguish these goods and services from those of all others. Although in other countries registration is what confers ownership rights in a mark, in the US it will generally be the first to use the trademark in commerce who is the owner of the mark. In other words, the holder of the trademark gains trademark rights through its use and not through registration.
What you have with your example is a company who has used the brand "slowmocup" to identify their cup for syrups. This trademark identifies the company's product and distinguishes it from all like-goods being marketed. Because the company was (apparently) the first to use the mark as an identifier for this class of goods, this company is owner of the mark and can prevent you and others from using the same or similar mark as a trademark. To allow the use of "slomo" as an identifier for your syrup company could/would work to confuse consumers as to the origin of the goods.
As a rule, a mark that is the same or confusingly similar to a mark already in use on the same class of goods or services will not only not be registered by the USPTO, but can lead to an infringement action against anyone using the rights-protected mark to identify their own goods or services.
What is looked at by both trademark examiners and courts will be the similarity of the trademarks (exactly the same, a variation, similar in looks or sound), the similarity of the goods or services being offered (the class of goods or services), the degree of care used by a consumer when making a purchasing decision (would the consumer recognize that the companies were different), the intent of the second user of the mark (was the name chosen for the purpose of trading off the good name of the first company), and any actual confusion that has occurred as a result of the dual use of the mark.
On the face of it and based strictly on what you have written here, I see legal concerns with your use of the same/similar name for your syrup company that is already being used to identify a company in the same/similar business as yours.
But specific facts always matter and these specific facts can be personally reviewed by an IP attorney in your area of California for a more thorough assessment. I recommend this personal review before you go ahead and use the name to identify your business or product. Good luck.
