Domain Name/ Trademark/Infringement?

[Bleu723]

What is the name of your state (only U.S. law)? Maryland

I recently embarked on new adventure (planning stages) of starting my own business and today I finally decided on the business name. I checked with my state and the name was available. I went to godaddy.com to check on availability of name/.com and it was also available so I paid for 3 year registration.

After sharing my great news with a close family friend, I learned that the name I chose was also a well known establishment in another state. But I figured I was OK because the domain was available and in my state the name is available. The problem is the business name is the same. The only difference is the spelling of the 2nd part of the name. Also, theirs is brick and mortar, while mine would eventually be mobile.

As I researched more online, I read that there was a very high chance the other company would come after me, 1st with a cease and desist letter, making me change the name, or by suit - with reason of infringement. They have three trademarks on their business - standard character Mark,gift cards/other supplies, and logo.

Finally, I found ANOTHER company with the SAME name, in another state (no.com but same name) same business who's also been around a while.

I am just so confused on what I can, should, or should not do at this point. Can anyone please help me make sense of all of this?

 

[quincy]

What is the name of your state (only U.S. law)? Maryland

I recently embarked on new adventure (planning stages) of starting my own business and today I finally decided on the business name. I checked with my state and the name was available. I went to godaddy.com to check on availability of name/.com and it was also available so I paid for 3 year registration.

After sharing my great news with a close family friend, I learned that the name I chose was also a well known establishment in another state. But I figured I was OK because the domain was available and in my state the name is available. The problem is the business name is the same. The only difference is the spelling of the 2nd part of the name. Also, theirs is brick and mortar, while mine would eventually be mobile.

As I researched more online, I read that there was a very high chance the other company would come after me, 1st with a cease and desist letter, making me change the name, or by suit - with reason of infringement. They have three trademarks on their business - standard character Mark,gift cards/other supplies, and logo.

Finally, I found ANOTHER company with the SAME name, in another state (no.com but same name) same business who's also been around a while.

I am just so confused on what I can, should, or should not do at this point. Can anyone please help me make sense of all of this?

To determine whether your use of the same or a similar name as one being used by another or other companies infringes, or is likely to infringe, on the rights of these other companies, facts matter.

Knowing the exact names being used by you and the other businesses is important (although you should not disclose them here).

Knowing the class of goods or services being marketed by each business is important.

Knowing the consumer market being targeted for these goods and services is important.

Knowing the geographic reach of the businesses is important.

These are a few of the factors looked at when there is a trademark dispute. There are others.

It is possible for two or more companies to operate under the same name, and it is possible for two or more companies to register the same name as a trademark. But the purpose of a trademark is to distinguish one company (and its goods or services) from another company (and its goods or services) so that consumers are not confused as to the origin of the goods or services. Trademark law centers on consumer confusion.

If all fast-food restaurants were named McDonald's, for example, you would not know where to buy Chicken McNuggets - so there can (generally) only be one McDonald's operating a fast-food restaurant in the same area (and, in the case of McDonald's, the "same area" would be the world ). This does not mean, however, that there could not be a McDonald's Hardware store or a McDonald's Clothing store (although I believe McDonald's now has a clothing line so a McDonald's Clothing store could be found to infringe).

As a most general rule, the first company to use a trademark in commerce will have an advantage if there is a challenge over another's use of the same name as an identifier. In the US, the presumed owner of a trademark will be the first to use the mark in commerce (in other countries, the first to register a mark will be the presumed owner).

I am sorry that there can be no definitive answer to your legal concern on a forum. We cannot do personal reviews on this site. I recommend that, before you invest a lot of time, energy and money into your new business, you have an IP attorney advise you on your trademark choice and the risk of using it to identify your business, and to determine better if you might be smart to choose another, unique-to-you name.

Good luck.

 

[Bleu723]

To determine whether your use of the same or a similar name as one being used by another or other companies infringes, or is likely to infringe, on the rights of these other companies, facts matter.

Knowing the exact names being used by you and the other businesses is important (although you should not disclose them here).

Knowing the class of goods or services being marketed by each business is important.

Knowing the consumer market being targeted for these goods and services is important.

Knowing the geographic reach of the businesses is important.

These are a few of the factors looked at when there is a trademark dispute. There are others.

It is possible for two or more companies to operate under the same name, and it is possible for two or more companies to register the same name as a trademark. But the purpose of a trademark is to distinguish one company (and its goods or services) from another company (and its goods or services) so that consumers are not confused as to the origin of the goods or services. Trademark law centers on consumer confusion.

If all fast-food restaurants were named McDonald's, for example, you would not know where to buy Chicken McNuggets - so there can (generally) only be one McDonald's operating a fast-food restaurant in the same area (and, in the case of McDonald's, the "same area" would be the world ). This does not mean, however, that there could not be a McDonald's Hardware store or a McDonald's Clothing store (although I believe McDonald's now has a clothing line so a McDonald's Clothing store could be found to infringe).

As a most general rule, the first company to use a trademark in commerce will have an advantage if there is a challenge over another's use of the same name as an identifier. In the US, the presumed owner of a trademark will be the first to use the mark in commerce (in other countries, the first to register a mark will be the presumed owner).

I am sorry that there can be no definitive answer to your legal concern on a forum. We cannot do personal reviews on this site. I recommend that, before you invest a lot of time, energy and money into your new business, you have an IP attorney advise you on your trademark choice and the risk of using it to identify your business, and to determine better if you might be smart to choose another, unique-to-you name.

Good luck.

Hi Quincy - thank you so much for your response! The other company and mine ARE in the same industry - just one is brick and mortar, and the other (mine) is not.
Because of this, I decided it's easier while it's so early (and probably in my best interest), to just change the name. I performed another trademark search on the one I now plan to go with, and luckily, no trademark in any way. I have 48 hours to change the .com without incurring additional charges so It's OK really - it will all work out!

Thanks once again!

 

[quincy]

Hi Quincy - thank you so much for your response! The other company and mine ARE in the same industry - just one is brick and mortar, and the other (mine) is not.
Because of this, I decided it's easier while it's so early (and probably in my best interest), to just change the name. I performed another trademark search on the one I now plan to go with, and luckily, no trademark in any way. I have 48 hours to change the .com without incurring additional charges so It's OK really - it will all work out!

Thanks once again!

I think you are smart to avoid the potential problems a same-name trademark can cause. Being in the same industry as the other company would definitely put you at a greater risk of an infringement notice or lawsuit.

Good luck with your new business, Bleu.

And thank you for the thanks.