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Register a brand that exists in other classes

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derber

Junior Member
Hi,

I am seeking to register an international brand. My research has resulted in one single company using the same brand name. My company will produce fashion items and backpacks. Their company is producing air-bubbles for transportation/shipping safety. From my logical point of view both products do not share/compete on the same market (not even close), it should hence not be problematic.

Would you generally agree on that?

regards,

Adrian
 


FlyingRon

Senior Member
In this case, your chances are that you are right. Of course, if the guys packing material brand gets suitably famous, it may start to be a problem.
 

adjusterjack

Senior Member
From my logical point of view both products do not share/compete on the same market (not even close), it should hence not be problematic.
Can't answer that without knowing the name.

However, it's not just the difference in product or market that results in a lawsuit. A company could be so protective of its unique brand that it sues anybody using it for anything.

Legal defense costs alone could put you out of business.

Why make yourself a target?
 

justalayman

Senior Member
Can't answer that without knowing the name.

However, it's not just the difference in product or market that results in a lawsuit. A company could be so protective of its unique brand that it sues anybody using it for anything.

Legal defense costs alone could put you out of business.

Why make yourself a target?
because everybody recognizes the name said everybody that wants to use the same name as another company.


And that is precisely why there could be a problem with using such a name. There are names that are so well recognized that although they may not be involved with the market sector involved, the notoriety of the name itself can cause, or even allow, the first company to seek to quash the second use of the name.

While many very famous names are used by different famous complanies in different market secctors, it doesn't mean even if legally defensible one company won't spend a lot of money to attempt to defend their trademark.


Any time you want to play the game such as this, one really needs to consider the amount of money the original user may have available to mount a legal challenge. Even if the second user is right in their position, the big cmany may be willing to cause the second user to spend themselves into oblivion defending a challenge. The big company wins by virtue of having more money to play with.
 

quincy

Senior Member
Hi,

I am seeking to register an international brand. My research has resulted in one single company using the same brand name. My company will produce fashion items and backpacks. Their company is producing air-bubbles for transportation/shipping safety. From my logical point of view both products do not share/compete on the same market (not even close), it should hence not be problematic.

Would you generally agree on that?

regards,

Adrian
derber, in what state or country are you located? I can't tell if your "Hi" is a nice greeting or an abbreviation for Hawaii.

Does the company that produces air-bubbles have a US federally-registered mark? Is it registered in another country?

If the other company is located in another country - especially if the other company has not registered their mark - your risks of infringing on the other company's rights are quite a bit less than if you will be using the same trademark in the same geographic area, this regardless of the class of goods being the same or different. The other company may have no rights to protect in the US, for example, if they are not an active company in the US but the other company may be able to prevent your use of the mark in a foreign market.

Because you plan an international market for your goods, you need to consider not only marks in use in the US but also marks used in other countries. What rights you might have to market your goods under the trademark in the US may not be the same rights you have to market your goods under the trademark in other countries.

I agree with the others that the specific names involved matter a lot. If the other company is, for example, Google, it doesn't matter what you market. You would be infringing on a famous name.

Can you provide more details - but without providing the exact names in question? Thanks.
 

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