US Trademark. Same word & same general industry.

[Ben4545]

Hiya,

I am in the process of starting a new business and I found someone has the same name as us registered as a US trademark.

The registered Goods and Services is: IC 035. US 100 101 102. G & S: Wholesale store services featuring clothing and jewelry products.

My company and brand would be spelt exactly the same as the spelling of the word they have trademarked.

We are a brand which plans to sell clothing and jewellery through online and in-store retail and may distribute via wholesale to other retailers.

My question is, firstly if my company is called by the same name would that cause an issue? Despite us being incorporated in the UK.

Secondly if we were selling into the US would the brand name be an infringement?

I was wondering since we're not technically a wholesale store.

Also they have it registered as a standard character mark. Since our brands logo is quite distinctive (basically the word but a painted version of it), could I apply for a Stylized Mark and would that cover my brand? Likewise the word is often used on some of our designs, would that be an infringement?

Thanks for any help you can provide,

Ben.

 

[quincy]

Hiya,

I am in the process of starting a new business and I found someone has the same name as us registered as a US trademark.

The registered Goods and Services is: IC 035. US 100 101 102. G & S: Wholesale store services featuring clothing and jewelry products.

My company and brand would be spelt exactly the same as the spelling of the word they have trademarked.

We are a brand which plans to sell clothing and jewellery through online and in-store retail and may distribute via wholesale to other retailers.

My question is, firstly if my company is called by the same name would that cause an issue? Despite us being incorporated in the UK.

Secondly if we were selling into the US would the brand name be an infringement?

I was wondering since we're not technically a wholesale store.

Also they have it registered as a standard character mark. Since our brands logo is quite distinctive (basically the word but a painted version of it), could I apply for a Stylized Mark and would that cover my brand? Likewise the word is often used on some of our designs, would that be an infringement?

Thanks for any help you can provide,

Ben.

If the US company finds your use of their registered name on the same or similar goods a problem, it becomes a problem for you.

Although it is almost always best to pick a trademark that is unique to you and your company alone, if the US trademark is not registered in the UK and the US company does not market their goods in the UK, it can be possible for you to claim the same name as your own for use in the UK on your goods. However, if you plan to expand your sales into the US, you would either need to market your goods under a different name in the US, or face a potential trademark challenge from the US holder of the mark. And this depends on the specific name in question - some famous names are protected from use by others whether registered or not.

You are smart to be considering legal issues that can arise with your business and its name. Picking the wrong name as an identifier for your company and its goods can lead to a costly court action that could cripple your business at its start. I recommend you seek out help from an IP attorney in the UK (it will be UK laws that will apply to you) and work with that attorney to see how best to avoid legal problems.

Good luck.

 

[Ben4545]

If the US company finds your use of their registered name on the same or similar goods a problem, it becomes a problem for you.

Although it is almost always best to pick a trademark that is unique to you and your company alone, if the US trademark is not registered in the UK and the US company does not market their goods in the UK, it can be possible for you to claim the same name as your own for use in the UK on your goods. However, if you plan to expand your sales into the US, you would either need to market your goods under a different name in the US, or face a potential trademark challenge from the US holder of the mark. And this depends on the specific name in question - some famous names are protected from use by others whether registered or not.

You are smart to be considering legal issues that can arise with your business and its name. Picking the wrong name as an identifier for your company and its goods can lead to a costly court action that could cripple your business at its start. I recommend you seek out help from an IP attorney in the UK (it will be UK laws that will apply to you) and work with that attorney to see how best to avoid legal problems.

Good luck.

My main issue is how broadly covering this type of trademark is. If it's a standard mark and in the same categories but explicitly states "Wholesale store services" would we be free to register and trade under the same name but for retail?

Thanks.

 

[quincy]

My main issue is how broadly covering this type of trademark is. If it's a standard mark and in the same categories but explicitly states "Wholesale store services" would we be free to register and trade under the same name but for retail?

Thanks.

I don't know. This is something you will need to discuss with an attorney in the UK who can review the specific name in question.

I think it best, certainly, that you choose a name that is uniquely your own so that you don't have the potential for a trademark challenge right from the start.

Good luck, Ben4545.