Can I use the world TESLA, or EDISON, as part of my new business name?

[testador]

Hi!
First, thanks to all in this forum. I've just read so far, and this is my first active question, but have read some fantastic advice on questions already answered before!

My question is:
I am starting a new online website. I want to use the word Tesla as part of the name and domain. I dont know how to check if this word is trademarked or protected by any estate, can you help me? Same would apply to Edison, as an alternative.

Alternatively, maybe you know of a way to check other historical figure's whose names I can use as part of my business name? For example, I know Luther King is protected, but Im not sure if something like KingChicken.com would incur in issues, or LutherKingLaw.com. Likewise, something like TeslaCars would make sense is forbidden because of TeslaMotors, but what about something like TeslaPR.com for a public relations firm or something similar? is just the extension Tesla forbidden?

Thanks in advance for all your advice

 

[Zigner]

Sorry, this forum is for US law only.

 

[FlyingRon]

If you're not overlapping in market space with other people using those names as their marks, you can. I wouldn't use TESLA for anything automotive or EDISON with anything in regard to power generation/supply.

 

[quincy]

The country you are located in can make a difference in what you can, and cannot, use safely.

For the U.S., you can search for registered trademarks by visiting the U.S. Patent and Trademark Office website (http://www.uspto.gov).

But this will only provide you with the names that have been registered and for what goods/services. In the U.S., trademarks do not need to be registered to have trademark protection. Trademark rights are gained by the use of them in commerce. So it can be important to do a more thorough state registration search and a countrywide use of mark search.

You can have problems using the names of famous people because these, while perhaps not trademarked, can have publicity rights that attach.

Famous names of any kind - ones that consumers connect in their mind with a specific business, product or service or a specific person - are generally best to avoid, regardless of for what you intend to use it (although some uses may be permissible, as FlyingRon noted).

There is a lot that goes into choosing names to market your business, your product or your service, and I recommend you spend some time (and, yes, money) consulting with an IP attorney in your area for a personal review of your specific wants and needs. This money spent upfront, as you build your website, can save you from having to spend a LOT of money later, should a rights-holder take exception to your use of a name and file suit against you.

Again, your country name is important - because trademark laws vary from country to country - and sitting down with an IP attorney in your area is also important, so that you do not risk wasting the money you are investing in your website.

 

[testador]

1
Thank you all for your very prompt and insightful replies to my initial question. I really appreciate it.

2
Specifically for Tesla, the idea is to create a brand using Tesla in relation to an online graphic design service.
Do you think this would be ok? Im trying to find if "Tesla" is a word protected for that area, but I cant find how to check that.

3
I will consult an IP expert, I understand that is an important step, but would like to find online if the word itself is protective for anything else other than the automotive industry

4
Also, I understand it varies by law on each state. However, since this brand would be only for a website, not brick an mortar, catering to a worldwide audience being online, I would start by not creating a full registered business, as I think its not needed to just offer design services on a website. Would you advice me otherwise?

Thanks again for your advice, its extremely valuable and I really appreciate it

 

[quincy]

1
Thank you all for your very prompt and insightful replies to my initial question. I really appreciate it.

2
Specifically for Tesla, the idea is to create a brand using Tesla in relation to an online graphic design service.
Do you think this would be ok? Im trying to find if "Tesla" is a word protected for that area, but I cant find how to check that.

3
I will consult an IP expert, I understand that is an important step, but would like to find online if the word itself is protective for anything else other than the automotive industry

4
Also, I understand it varies by law on each state. However, since this brand would be only for a website, not brick an mortar, catering to a worldwide audience being online, I would start by not creating a full registered business, as I think its not needed to just offer design services on a website. Would you advice me otherwise?

Thanks again for your advice, its extremely valuable and I really appreciate it

What state or country are you in?

Tesla is a rights-protected, famous mark.

 

[TigerD]

1
Thank you all for your very prompt and insightful replies to my initial question. I really appreciate it.

2
Specifically for Tesla, the idea is to create a brand using Tesla in relation to an online graphic design service.
Do you think this would be ok? Im trying to find if "Tesla" is a word protected for that area, but I cant find how to check that.

3
I will consult an IP expert, I understand that is an important step, but would like to find online if the word itself is protective for anything else other than the automotive industry

4
Also, I understand it varies by law on each state. However, since this brand would be only for a website, not brick an mortar, catering to a worldwide audience being online, I would start by not creating a full registered business, as I think its not needed to just offer design services on a website. Would you advice me otherwise?

Thanks again for your advice, its extremely valuable and I really appreciate it

Given that Tesla is a little sensitive about trademarks at the moment, do you really think you can compete with Elon Musk in a spending battle?

DC

 

[quincy]

With SO MANY words and names available, and SO MANY ways to invent new ones, it seems to me that there are far better ways to introduce a new design business to consumers than by being a defendant in a legal action.

 

[testador]

I understand the word Tesla is a trademark. Also, it is not a matter of creativity.
It is merely a question about the specific avaliability of using Tesla"Something".com to start a website to sell some online services.

The Trademark Electronic Search System shows trademarks for many uses of Tesla as part of other trademark, such as Tesla Universe, Tesla Capital, Tesla Logos, Tesla Gaming, etc, and they were not owned by Tesla Motors.
Are you saying it cannot be used?

Additionally, if this is for a website, not related to Nicolai Tesla nor to Tesla Motors, does it really matter the geographic state? it is just a website? what are the legal implications of it in this case?

Thank you all again for your explanations! this forum is very active, respectful and useful. I appreciate it

 

[quincy]

I understand the word Tesla is a trademark. Also, it is not a matter of creativity.
It is merely a question about the specific avaliability of using Tesla"Something".com to start a website to sell some online services.

The Trademark Electronic Search System shows trademarks for many uses of Tesla as part of other trademark, such as Tesla Universe, Tesla Capital, Tesla Logos, Tesla Gaming, etc, and they were not owned by Tesla Motors.
Are you saying it cannot be used?

Additionally, if this is for a website, not related to Nicolai Tesla nor to Tesla Motors, does it really matter the geographic state? it is just a website? what are the legal implications of it in this case?

Thank you all again for your explanations! this forum is very active, respectful and useful. I appreciate it

Can you please include the name of your state or, if not in the U.S., the name of your country? Thank you.

State and country names actually do matter, even when you are talking websites.

 

[testador]

Of course, Quincy!
My apologies, I was sure I mentioned it in my last post.
This post relates to either Texas, or Mexico.
Let me explain: I am currently residing in Mexico, to reduce costs, but all my clients would be US based, If it made a significant difference I would consider going back to the US to start the website. Being that it is an online site, I can move around.
I understand that if I register as a physical business or company in MX or in the USA I need to check the respective IP laws for each, but I am checking here if you have any advice about using the tesla"something".com domain and weather that means I actually need to register somewhere other than registering my domain since it is not a brick and mortar business, but may be in the distant future.

Thanks again for your replies!

 

[quincy]

Of course, Quincy!
My apologies, I was sure I mentioned it in my last post.
This post relates to either Texas, or Mexico.
Let me explain: I am currently residing in Mexico, to reduce costs, but all my clients would be US based, If it made a significant difference I would consider going back to the US to start the website. Being that it is an online site, I can move around.
I understand that if I register as a physical business or company in MX or in the USA I need to check the respective IP laws for each, but I am checking here if you have any advice about using the tesla"something".com domain and weather that means I actually need to register somewhere other than registering my domain since it is not a brick and mortar business, but may be in the distant future.

Thanks again for your replies!

Both the U.S. and Mexico recognize the first to use a trademark as the presumed owner of the mark, whereas in many countries of the world it will be the first to register the mark who will be the owner of the mark - which is why Tesla is having problems with the use of their name and logo in China. Both were registered by someone else before Tesla marketed in China, and Tesla is additionally having a difficult time proving it is a "famous" mark there.

So, neither in Mexico nor in the U.S. will you have the advantage of being the first to register the name Tesla nor will you be able to successfully argue that Tesla is not a recognized famous name in these countries.

With the country out of the way, it comes down to legal risk and how much you want to take. It is always going to be legally risky to adopt a famous name as your own. You are liable to attract the attention of lawyers with your use and these lawyers will be supported by vast amounts of Tesla money. Even if you find your use does not conflict with Tesla in the marketplace, you could still have to expend time, energy and, most importantly perhaps, money in defending your use should it be challenged.

Please take my prior recommendation and have your proposed website business plans personally reviewed by an IP attorney in your area. We cannot do personal reviews on this site.

Good luck.

 

[testador]

Quincy,
No personal review is necessary: your general advice and experience shown in this message thread is very valuable and insightful. I really appreciate it.

Thank you very much, and, once again, keep up the great work in the forum. I will do my best to support and spread the voice around about the valuable community found here

 

[quincy]

Quincy,
No personal review is necessary: your general advice and experience shown in this message thread is very valuable and insightful. I really appreciate it.

Thank you very much, and, once again, keep up the great work in the forum. I will do my best to support and spread the voice around about the valuable community found here

Thank you for the nice words, testador.

I still recommend you have the specifics of your proposed name and website personally reviewed by an IP attorney in your area, though.

 

[testador]

Thank you , Quincy, I am following that advice as well
Again, I appreciate your support and comments, best regards!