Same surname, different first name?

[trademark-quest]

Hi everyone --

I'm setting up a luxury leather shoes company for women and I have a surname in mind that I'd like to use in conjunction with a first name but not sure if I'm allowed to do so because it was also the surname of a very popular designer from the 50s. Some company already holds the trademark for this surname (on its own, no first name) both here in the US and in Europe (though only for perfume in the US). Even though they hold the trademarks for all categories in Europe, the company does not engage in apparel and leather anymore, they only sell perfume.

I have a couple of examples of designers with the same surname but different first name (e.g. Vera Wang and Alexander Wang, Anne Klein and Calvin Klein). But these surnames are quite popular, whereas in my case there are around 1,005 individuals with that last name in the US (ranks 22,501 for all surnames) and 5,886 people in the UK (ranks 1,745th). Slightly more popular in the UK as it is an old British surname.

-- Thank you!

 

[quincy]

Hi everyone --

I'm setting up a luxury leather shoes company for women and I have a surname in mind that I'd like to use in conjunction with a first name but not sure if I'm allowed to do so because it was also the surname of a very popular designer from the 50s. Some company already holds the trademark for this surname (on its own, no first name) both here in the US and in Europe (though only for perfume in the US). Even though they hold the trademarks for all categories in Europe, the company does not engage in apparel and leather anymore, they only sell perfume.

I have a couple of examples of designers with the same surname but different first name (e.g. Vera Wang and Alexander Wang, Anne Klein and Calvin Klein). But these surnames are quite popular, whereas in my case there are around 1,005 individuals with that last name in the US (ranks 22,501 for all surnames) and 5,886 people in the UK (ranks 1,745th). Slightly more popular in the UK as it is an old British surname.

-- Thank you!

Okay. You know already that companies can exist that use similar names as trademarks. The key to trademark infringement is consumer confusion. If your trademark does not confuse consumers into thinking that you are the other company, it can be possible to use the trademark to identify your goods or services.

This does not mean that the company with the same name cannot attempt to prevent your use of the name. They can and, if this is a famous mark you are talking about, the chances are good they will try.

Have your trademark and your product line reviewed by an IP attorney in your area, to better assess your risks. It is generally smarter to start off any new business with a unique name that is solely your own and then build on this name with a good marketing/advertising plan, though.

Good luck.

 

[trademark-quest]

Thank you, I will consult with a trademark solicitor.

I should also mention that there is another person selling perfumes with that trademark (just different first name) but I suspect they would only go after you if your company starts becoming more successful than theirs...

 

[Silverplum]

Thank you, I will consult with a trademark solicitor.

I should also mention that there is another person selling perfumes with that trademark (just different first name) but I suspect they would only go after you if your company starts becoming more successful than theirs...

This site deals only with US law.

 

[trademark-quest]

Yes, they are both registered in the US.

 

[quincy]

Thank you, I will consult with a trademark solicitor.

I should also mention that there is another person selling perfumes with that trademark (just different first name) but I suspect they would only go after you if your company starts becoming more successful than theirs...

If someone wishes to keep their trademark, they need to defend against ALL other uses of it, even if the other user of the mark is small and unsuccessful. If the trademark holder doesn't work to prevent other uses, big or small, the trademark holder risks losing all rights to the mark. It is up to the trademark holder to police the marketplace to make sure their mark is not being infringed.

That is why the NFL and the New Orleans Saints peppered the state of Louisiana with cease and desist notices when they discovered small shops selling tee-shirts with "Who Dat?" slogans (the NFL mistakenly believing the League actually had trademark rights in "Who Dat?" - when, in fact, they didn't).

At any rate, it is good that you plan to consult with an IP professional. Good luck.