Trademark

What is the name of your state (only U.S. law)? MA
I have several products similarly named, for example; ABC something, ABC Storage Server, ABC Record Server, … My company is not named ABC.

Suppose ABC is a very popular company name in the industry which my products are in. I have a few questions wrt trademark.

1/ Suppose there is a company named ABC in the same field, but their products have absolutely nothing to do with what my products are doing. Their products do not even begin with ABC. Am I infringing the trademark of their company when I use ABC as the initial of my products?

2/ Suppose there is a company named ABZ in the same field. Can this company accuse me that I am infringing the trademark of their company when I use ABC as the initial of my products (because they sound the same)?

3/ There is a company in Europe that sells a product with ABC initial. If I google the category of my product with the name ABC, this company’s site pops up. But they are in a completely different field Am I infringing their trademark just because when someone google searches ABC with the category of my products, this company’s site pops up? Will the same rules follow if this company is in US?

4/ Suppose one of my product is named ABCKITS and an international company in the same field has a similar product named ABCkit. Suppose the OEM of this ABCkit filed a trademark in another country a number of years ago (obviously, I just found out), and this product is selling in US for a number of years. I am infringing their trademark even though the spelling and capitalization of between the two names are different. Correct?What is the name of your state (only U.S. law)?

Thanks in advance.

Those who are using ABC, ABZ or ABCkit as their trademark could sue you for trademark infringement in all of the scenarios you describe above.

Whether any of the ABCs, or variations thereof, could win a trademark infringement suit filed against you is a question mark. It would depend on the specific facts presented by each party.

Most basically speaking, the success of an infringement suit filed against you would depend on whether the plaintiff in the action can demonstrate there has been, or there is likely to be, consumer confusion over your use of the same (or similar) mark, and whether the plaintiff in the action can show that your use in some way diminishes the value of the plaintiff's mark.

The use of the mark by you at this point, knowing as you do about the other same-named marks already used in commerce by others, can make any damages awarded a plaintiff in a successful infringement suit greater. The plaintiff will want to support his suit by showing that actual harm has resulted from your use.

That said, several "same named" companies can and do peacefully coexist.

A review by an IP attorney in your area, of your proposed (or current) use of ABC to identify your products, would be wise and is advised.

quincy said:

The use of the mark by you at this point, knowing as you do about the other same-named marks already used in commerce by others, can make any damages awarded a plaintiff in a successful infringement suit greater. The plaintiff will want to support his suit by showing that actual harm has resulted from your use.

Click to expand...

Hello Quincy,
Thanks for the feedback. First, I have to rename of my product from ABC XXX to something else. I have no choice as I found out this morning about the very likelihood of infringing the trademark of another company. My existing clients have expressed their goodwill of not objecting me from changing the names of all my products.

Want to follow up with your above comment with this. Suppose there is a company name ABC. Does it matter whether this company has products and/or services in the same field as I am, I am by law not able to use any products with name ABC?
For example, if I am selling candy, I cannot name my candy as FordCandy, because people would associate the name "Ford" to be auto manufacturer. And so, Ford can sue me of trademark infringement if I choose to name my candy as FordCandy. Correct?
So does trademarking a company name will bar the rest of the world from using even part of the name in their product?
Thanks in advance.

The answer to all of your questions, sorcerer123, is "it depends."

When you name your company, your products or your services using the same or a similar name to that of an existing company, product or service, you run a greater risk of a trademark infringement suit (or a dilution, blurring, tarnishment claim) than you would if your company name, products or services had a unique name.

But, just because names are the same or similar does not necessarily mean that a lawsuit will be filed against you or, if filed, that one would be successful. It often will depend on how well-known the original trademark happens to be.

There are several ABCs that currently exist (ABC Warehouse, ABC radio and TV, abcDistributing to name three) and close to a hundred companies with ABC acronyms. There are several McDonald's and a couple of Apples. Same or similar names often do not create a trademark infringement problem if the companies offer different products or services, if they operate in different geographical areas, if they target their goods or services to a different consumer base, and if the same names do not cause consumer confusion or any likelihood of consumer confusion.

But "often" is not "always."

McDonald's, for example, has sued many times over the use of their trademarked name. While a McDonald's Hardware store would be at little risk of being sued (unless their building had Golden Arches ), a restaurant trying to operate under the name McDonald's would be taking a huge legal risk.

The Hebrew University of Jerusalem, holder of the rights in the Einstein name, has sued several times in the past over the unauthorized use of the trademarked Einstein name for a company's products and services.

There are two Apples that currently exist, but it took four trademark infringement suits by Apple (the multi-media company founded by the Beatles) against Apple (the computer giant), and close to $30 million awarded in damages to the Beatles' Apple, before another trademark challenge in 2007 by the Beatles' Apple finally led to an Apple Corps and Apple Computers settlement agreement (and somewhat of a working relationship between the two now).

Trademark holders with famous trademarks like Ford or Disney or Microsoft or the NFL will aggressively protect their rights in their marks by suing (or threatening to sue) anyone who infringes on these rights, because they have a lot invested in these names. These trademark holders also have a lot of money and a whole army of attorneys ready to launch a full-out attack on anyone who infringes, overuses, or abuses the use of their trademarked names.

While sharing a trademarked name with a successful company may attract some consumers to your business who mistake it for the other, it will probably also attract the attention of the other company's lawyers.

So, it is always wise and recommended that you use for your business name, your products and/or your services a name that is unique to your business, products and/or service.

slwslw said:

Do any of those companies even have a valid trademark?

If not, you can use the same name, unless they are incorporated in the same state you are in.

They can be incorporated in a different state and you can use their name, so long as they don't have a trademark.

Just because they say they have a trademark doesn't mean they still do or ever did.

If they did have a trademark, they may have lost its protection if they didn't keep registering it every 2 or 3 years as is required.

Click to expand...

OP, please listen to quincy. This poster's advice could land you in serious legal trouble.

Everything slwslw said about trademarks is wrong.

To correct the misstatements: First, trademarks are used to identify a company and their products or services. A trademark distinguishes one company and its products or services from another. A company name is a trademark. In the U.S., trademark rights arise through a trademark's use in a commercial context. The first user of the mark commercially is generally considered the owner of the mark. Owners of a trademark can assert their rights in the mark (and are responsible for enforcing these rights), regardless of where their trademark originated or is used or where the other user's trademark originated and is used.

Registration of a mark is not necessary. There is no need to register a mark at all, especially not every two or three years. In fact, ownership rights in a mark can last forever, as long as the mark is continuously in use (is not abandoned by the trademark holder). State or federal registration of a mark is NOT necessary to be afforded rights in a mark.

With ALL of those corrections to slwslw's post now made, I will add that you can register a mark with your state or through the USPTO if you want to and if the name qualifies for trademark registration. Registration of a mark provides the mark holder with added protection. Registration of a trademark provides public notice that the mark is already in use. For marks to be federally registered, the trademarked goods or services must be used in commerce (across state lines). Internet sales of a company's product applies as a use in commerce. The trademark holder with federal registration of a mark has the ability to sue for infringement in a federal court and collect statutory damages. For federal registration, renewals of the registration are every 10 years, and the trademark can be renewed every ten years for an indefinite period of time as long as the mark continues to be used in commerce.

Not all trademark owners who attempt to assert their rights in their marks, whether their marks are federally or state registered or not, will be able to win a trademark suit against another user of the mark. Whether a lawsuit is worth pursuing depends on a lot of different factors.

Please refer back to my earlier response for some of the factors looked at in an infringement suit.



(thanks, Proserpina)

quincy said:

Please refer back to my earlier response for some of the factors looked at in an infringement suit,
(thanks, Proserpina)

Click to expand...

Thank-you all, I understand better now. Have a wonderful holiday.

You have a wonderful holiday, too, sorcerer. I wish you much success with your business.

I'm eating crow now, Quincy

Thanks for correcting me Quincy.

Must I register my trademark?

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits.

What are the benefits of federal trademark registration?
Owning a federal trademark registration on the Principal Register provides several advantages, including: •Public notice of your claim of ownership of the mark;
•A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
•The ability to bring an action concerning the mark in federal court;
•The use of the U.S. registration as a basis to obtain registration in foreign countries;
•The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
•The right to use the federal registration symbol ® and
•Listing in the United States Patent and Trademark Office’s online databases.

Do federal regulations govern the use of the designations "TM" or "SM" or the ® symbol?

If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.


It's between the 5th and 6th year you need to file a certificate of continued use, to maintain the registration, but as Quincy said, registration is not needed. Sorry I gave inaccurate advice.

I think my tag line says something about my not being an attorney.

Crow is better, I understand, with barbeque sauce.

Happy Holidays, slwslw.