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Trademark question - utilizing part of a name

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jnr47

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

I have a question relating to trademarks. If a name is already trademarked under the same Goods and Service category, but you were going to use part of the name in the same category, can this be done.

For example, lets use the company "Outward Bound" - which has a trademark application pending. Could someone effectively trademark and use the name "Bound"?

I am not so much worried about protecting the name as I am being sued years down the road for trademark infringement.

Any thoughts to this?

Thank you in advance.
 


quincy

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

I have a question relating to trademarks. If a name is already trademarked under the same Goods and Service category, but you were going to use part of the name in the same category, can this be done.

For example, lets use the company "Outward Bound" - which has a trademark application pending. Could someone effectively trademark and use the name "Bound"?

I am not so much worried about protecting the name as I am being sued years down the road for trademark infringement.

Any thoughts to this?

Thank you in advance.
If you are worried about being sued for trademark infringement in the future, it is best if you come up with, at the start, a unique name for your new business that does not risk being confused with an existing company.

While it is possible to register the name "Bound" when another company has a trademark "Outward Bound," in other words, it is also possible for Outward Bound to challenge not only your registration but the use of your mark on similar goods or services.

Again, to avoid the hassle of a potential trademark challenge, creating a name unique to your company alone is the smartest option.

You can review the actual names with an IP attorney in your area, however, to determine better how great the risk of infringement might be.

Good luck.
 
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jnr47

Junior Member
If you are worried about being sued for trademark infringement in the future, it is best if you come up with a unique name for your new business that does not risk being confused with an existing company.

While it is possible to register the name "Bound" when another company has a trademark "Outward Bound," in other words, it is also possible for Outward Bound to challenge not only your registration but the use of your mark on similar goods or services.

Again, to avoid the hassle of a potential trademark challenge, creating a name unique to your company alone is the smartest option.

You can review the actual names with an IP attorney in your area, however, to determine better how great the risk of infringement might be.

Good luck.
Thank you Quincy! Pretty much its the same situation no matter which route you go. Try and find something no one else is using to avoid any legal risk possible. Appreciate your comments.
 

quincy

Senior Member
Thank you Quincy! Pretty much its the same situation no matter which route you go. Try and find something no one else is using to avoid any legal risk possible. Appreciate your comments.
You're welcome, jnr47. :)

If you look at some of the most successful companies in existence today, they all created trademarks that are unique to them alone (Microsoft, Adidas, Pepsi ... ) and then they built brand recognition through smart advertising. The bottom line is that you want consumers to identify your unique products and services through your trademark and not have consumers confuse you with anyone else.

And this relieves you of some of the worry of infringing on another's mark that you might otherwise have.

Good luck.
 

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