Possible red flag for trademark

[sobchek]

Operating in New York State

I am going into business as a full-service motion design studio. It's a hybrid of animation and graphic design for advertising and branded content. I came up with a name that I loveand works perfectly for my needs, but it is currently trademarked, active but not being used, by a large entertainment company based in Atlanta, GA. I want to believe there is a big enough distinction between being a for-hire motion studio, and an original content entertainment company, even though we use the same medium. My brand isn't seen in the product I create for clients, only on my website and possibly video for promotional use of the business. The logo designs are not similar, just share the same name. The company still has a website landing page, but no implied activity as a business. According to news sources, the company was dismantled and absorbed into a different company, but like I said, the trademark/copyright is still active when I search USPTO.

Is it too fine of a line I am trying to draw between the two companies or because we work in the same very broad industry of video content, I am putting myself in a dangerous spot?

 

[Zigner]

Operating in New York State

I am going into business as a full-service motion design studio. It's a hybrid of animation and graphic design for advertising and branded content. I came up with a name that I loveand works perfectly for my needs, but it is currently trademarked, active but not being used, by a large entertainment company based in Atlanta, GA. I want to believe there is a big enough distinction between being a for-hire motion studio, and an original content entertainment company, even though we use the same medium. My brand isn't seen in the product I create for clients, only on my website and possibly video for promotional use of the business. The logo designs are not similar, just share the same name. The company still has a website landing page, but no implied activity as a business. According to news sources, the company was dismantled and absorbed into a different company, but like I said, the trademark/copyright is still active when I search USPTO.

Is it too fine of a line I am trying to draw between the two companies or because we work in the same very broad industry of video content, I am putting myself in a dangerous spot?

From your description, I'd say you'd be in a dangerous spot. A "graphic/animation" design studio of the same name as a large entertainment company can be easily confused. In any case, it may just come down to whether you can afford to fight it if they come after you.

 

[sobchek]

From your description, I'd say you'd be in a dangerous spot. A "graphic/animation" design studio of the same name as a large entertainment company can be easily confused. In any case, it may just come down to whether you can afford to fight it if they come after you.

Thanks Zinger.

So from what I gather is, the worst case scenario is they send me a cease and desist and I am forced to rebrand? Or can they come after me financially, aside from legal fees...

As well, when I search USPTO for the name "SUPERDELUXE," all as one word, which is how I have branded myself (the big reveal), it turns up nothing. Now I'm clearly grasping at straws, but does that distinguish me in enough?

I think it's obvious at this point that I really want to keep my branding as is...haha

 

[quincy]

Thanks Zinger.

So from what I gather is, the worst case scenario is they send me a cease and desist and I am forced to rebrand? Or can they come after me financially, aside from legal fees...

As well, when I search USPTO for the name "SUPERDELUXE," all as one word, which is how I have branded myself (the big reveal), it turns up nothing. Now I'm clearly grasping at straws, but does that distinguish me in enough?

I think it's obvious at this point that I really want to keep my branding as is...haha

There is always the risk of financial damages being awarded a company whose trademark has been infringed. There can be a cease and desist notice sent to an infringer, and a court can issue an injunction, and a court can issue a seizure and destruction order, where you lose all of your goods. It is then not just a simple matter of rebranding.

Trademark infringement is not solely dependent on the way the name appears (as one word or as two words or with a period separating the words or whatever). What also matters, among other factors, is how the word sounds when spoken. Even a name that is the phonetic spelling of a trademark or that is the foreign translation of a trademark can be infringing on the original trademark.

Some companies operating under the same name can and do peacefully co-exist in the marketplace if their goods and services are different, or if the geographic regions where the goods or services are being offered are different. But I see problems with your proposed trademark in both of these areas.

As a new business, you will want to avoid as much as possible any risk of legal conflict by choosing a trademark that is unlike all others. The whole purpose of a trademark is to distinguish your business from all others. You want it to be as unique as the products or services you are offering.

 

[sobchek]

Thanks Quincy.

I guess I have to say goodbye...

 

[quincy]

Thanks Quincy.

I guess I have to say goodbye...

Oh. Okay. Goodbye.

Two final notes before you go, though.

One: It is generally not smart to try to challenge the rights of a big company like Turner Broadcasting. The company not only has far more money than the average individual or small company to fight a legal battle, it also has a legal team that can be a formidable foe in court.

Two, and finally: As to the "dead," one word trademark, the mark itself was cancelled in July of 2015 but cancellation can just be a failure to renew the registration and not an intent to stop using the trademark in commerce. Federal registration of a trademark is not required in the US for the mark holder to have rights.

Thanks for visiting, sobchek. Good luck.

 

[sobchek]

I was referring to saying goodbye to the business name.

Thanks for the advice. I mean, I knew it wasn't a battle I would actually fight, I just needed someone else to tell me that it isn't worth it. Back to the drawingboard

 

[quincy]

I was referring to saying goodbye to the business name.

Thanks for the advice. I mean, I knew it wasn't a battle I would actually fight, I just needed someone else to tell me that it isn't worth it. Back to the drawingboard

Ha. I thought your departure from the forum was a rather abrupt one.

Yes, I think it is best if you say goodbye to thoughts of using Super Deluxe (or SUPERDELUXE) as a business identifier. I am not real fond of that name anyway. It is not all that creative and, judging by the 21 previous registrations of the name (or variations thereof) for various and assorted products and services, it is not all that original either.

I think you can do much better.

Good luck.