Trademark Law

[Azarenka]

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

Hi.. I was interested in knowing if there is a trademark already in the "Style Guy" would something like "City Style Guy" be allowed to use as a new registration?

 

[quincy]

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

Hi.. I was interested in knowing if there is a trademark already in the "Style Guy" would something like "City Style Guy" be allowed to use as a new registration?

Possibly. It depends on all facts.

Are you currently using "City Style Guy" to identify your own business, product or service? If so, is your business, product or service the same or similar to a business, product or service that has been operating under the trademark "Style Guy?"

The words city, style and guy are probably unregistrable on their own but if together they gain a secondary meaning in the marketplace (become connected in people's minds with a specific business, product or service), the trademarked name could be registrable.

Do you want to provide more details?

 

[Azarenka]

I was considering a DBA under that name. They are similar businesses. The one that is currently registered though (Style Guy) is a magazine column. the one I want to do is a magazine and website.

 

[quincy]

Ahh. I see problems.

I suggest you come up with another, unique name for your magazine and website. Trademark law centers on consumer confusion, and I can see a consumer becoming easily confused over thinking your site is affiliated with Style Guy's magazine column. If Style Guy writes on men's fashions and you were selling doughnuts, the confusion would be less likely.

Invented names like Kodak and Xerox, and portmanteau words like Microsoft, are considered strong marks and strong marks receive the greatest protection under trademark law. Weak marks are often ones that use geographic names or generic words or surnames or words that describe the product or service. These weak marks only become strong marks over time, when they become attached in people's minds with a specific product or service (ie, Speedy Printing, Dunkin' Doughnuts, Arizona Iced Tea, McDonalds). These marks are then said to have gained a "secondary meaning." Some weak marks (perhaps most) will never reach that level of recognition.

It is almost always wisest, therefore, when you are starting a new business to come up with a trademark that is uniquely your own, and then build up recognition of the mark through its use in commerce. The more unique the name, the more protection it is offered at the start under trademark law. "Azarenka," for instance, seems to me to be a pretty good name (unless your business is tennis-related - then you may run into publicity rights issues with the tennis player of the same name).

 

[Azarenka]

What would be the worst that could happen if I decide to use that name? I did some research on generic words like "fashion design" and there seemed to be several trademarked companies that incorporate that term. would this fall into the same realm?

 

[quincy]

What would be the worst that could happen if I decide to use that name? I did some research on generic words like "fashion design" and there seemed to be several trademarked companies that incorporate that term. would this fall into the same realm?

The worst that could happen if you use the name you want to use is that the Style Guy files a lawsuit against you to prevent you from using the mark. He could potentially obtain an injunction that prohibits your use of the name and he could potentially collect monetary damages. If the Style Guy can demonstrate a likelihood of confusion or a weakening of the value of his mark, then any award of damages would depend on the amount of harm he can prove. Because your infringement could potentially be judged "willful," knowing as you do that there is a mark already in existence that is used in the same or similar field, the damages awarded could be greater.

There ARE several companies that exist that use the same or similar names, and they operate without problem. This is often because there is little likelihood one will be confused with another, because they operate in different geographical areas or their products or services are not alike. For example, there is little chance that a consumer would confuse ABC Warehouse with the ABC broadcast network, so they peacefully coexist. Apple Computers and Apple Music on the other hand have had problems, and they have wound up in court more than once (although now they seem to have worked out a bit of a peace treaty).

I still recommend that you come up with a different name for your business, because using a similar name in a similar business is a risk. But the choice is yours to make. You may want to review all facts with an attorney in your area, though, before investing a lot of time and money into your website and magazine.

Good luck.