TRADEMARK !!!???!!! little help.

TRADEMARK QUESTION!!!!! I looking to trademark a name though the United States Patent and Trademark Office and the name I want sounds like an other name, but when I did my search on the Gov. database, nothing comes up (like, no one has that word).** Exp.** if someone has the word "Flying" trademarked already but you want to use the word "FlyingX". And, lets say we both are clothing companies. Can I use the name "FlyingX" if there is already a "Flying" ??

The first business that uses a mark in a commercial way, to identify its goods or services, is generally considered the owner of the mark. Trademark rights arise through this use of the trademark in commerce and not through registration of the mark. Registration of a trademark is not necessary, although registration can provide a trademark holder with additional protection of the mark.

Because the first business that uses a mark commercially is generally considered the owner of the mark, any business that uses the same or a similar mark to identify their own products or services could be infringing on the rights of the first owner. This infringement is more likely if the same or similar trademark is used by the new business on the same or similar goods or services.

So, using your example, using FlyingX to identify a new clothing company is likely to be found infringing on the rights of the old clothing company with the name of Flying. The FlyingX name is likely to confuse consumers as to the origin of the clothing goods. Trademark law centers on consumer confusion and if there is a likelihood of consumer confusion, there is likewise the likelihood of a trademark infringement suit filed against the FlyingX company by the Flying company.

If you are starting a new company, it is best to start it using a name that is unique, that is unlike any other company name already in existence. One way to do this is through a trademark search, which must cover not only the trademarks that are registered federally with the USPTO, but also those that are registered with the states and those that are not registered at all. It can be an overwhelming task, which is why many who are serious about choosing a unique name will hire a trademark search firm to ensure as much as possible that no other like-name is currently in use.

Another way to identify your company's goods or services is to make up a brand new word entirely, like the makers of Kodak, Xerox, Microsoft and Tylenol all did. Because coined words are strong marks at the outset, your company can better protect the use of the trademark against all unauthorized uses.

Generally a business will not register their trademark until the trademark has been used in commerce - until the business is up and running and the goods and services are being marketed. If a company wants to register their mark early, prior to use, they would file an "intent-to-use" trademark registration application. The filing date of this intent-to-use application will be used by the USPTO to indicate the date of first use, but the company must actually use the mark within a certain time frame to actually obtain registration of the mark.

Picking a name to identify your business and its products or services is an important first step to take when starting a new business, and you are smart to research trademark law now so that no conflicts arise over the name you choose as an identifier. But picking a name is just one of many aspects of starting a business and it is generally wise to, and I certainly advise that you, consult with an attorney prior to implementing any of your business plans. By going over all of the legalities involved in running the business prior to making your business public, you can avoid a lot of legal headaches in the future.

Good luck, beto42089.

hijack

Sorry to hijack this thread but i have a similar question.... lets just say this person above tried to trademark flyingX and it was approved by the USPTO and that was his trademark, does this diminish any chance of the "flying" company of taking legal action and succeeding? In other words, if your proposed trademark is successful, are you pretty much in the clear?
What if the other person has "proof" that people are getting confused by the two.

Here is the hypothetical situation:
Lets say there used to be a martial arts studio in Texas called XMA (Excellent Martial Arts) and it went out of business so to speak but someone still "owned" the name/company, they just weren't doing much with it.

Then someone else (me) starts a martial arts studio called TEXMA (Texas Martial Arts, pronounced TEX M. A.) and hire a couple of the same employees that were out of work when XMA closed.

XMA emails TEXMA saying "hey, that sounds too much like XMA and you are confusing people!" even though "excellent" and "Texas" are nothing alike.... If we (TEXMA) went forward with the business, applied for a trademark and was successful, would XMA has ANY leg to stand

Our trademark hasn't been approved yet but passed the initial search by legal zoom and there were not any conflicts so i am assuming its ok.... but we got the cease and desist from the other company.

Yes, this is a bit of a hijack of beto's thread, but it seems to sort of address the same question that beto has. If this is a real situation you are facing and not just a hypothetical, however, your best bet is to speak with an attorney in your area who can personally review the specifics and tailor the advice accordingly.

That said, any trademark owner who feels that another's use of a trademark or another's proposed trademark registration is or will be damaging to their own unregistered or registered mark can challenge the use and/or the proposed registration of the new mark.

There may be only a very short time within which a party opposed to the registration of another's mark is able to do this, however.

For a mark that has been published in the Official Gazette for registration on the Principle Register, the opposing party must file opposition within 30 days from publication.

If the mark has already been placed on the Principle Register, the original trademark holder can petition the USPTO for cancellation of the new registration within 5 years (its more complicated than this, so see 15 USC §1064 for more information on petitions to cancel marks on Principle Register and for marks on the Supplemental Register, see 15 USC 1092).

In your example, if XMA has not used the mark for a continuous period of three years or more, it would be considered abandoned, even if it had previously been registered (see 15 USC §1127). In that case, TEXMA could potentially register the same or a similar name with the USPTO.

XMA could try to challenge TEXMA's use of the name, disputing the fact that the XMA mark was ever abandoned. TEXMA may have a hard time proving that XMA did not still own rights to their trademark, if XMA were to oppose TEXMA's registration. But whether any challenge would be successful or not depends on all facts. There is no way to determine an outcome or even make a reasonable guess based on the amount of information that can be provided in a forum thread.

Your question, and beto's question, really depends on so many factors and on knowledge of all of the specific facts. It is hard to give any realistic outcome of an opposition or challenge to another's use of an already existing mark.

I can tell you that, whenever a person receives a cease and desist letter, there is some cause for concern. The receipt of such a letter is a good reason for any individual or any company to seek the advice of an attorney in their area who can personally review the matter.

quincy, thanks so much for the response....its one of those things that you have a whole weekend of worry because it's after hours or on a weekend and you can't do much but ponder the entire situation until monday comes and you can actually contact a lawyer..... very useful info here, thank you so much.

You're welcome, fishermanSTEVE. For more information, to get you through the weekend , you can peruse the Trademark Office site at http://www.uspto.gov.