Am i Infringing on a brand competing in the same market (Brand Name)?

[blasfome21]

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

I am owner of Brand A widget company, and have created a brand new design for a new widget.
Since designing this new widget i have realized that my new widget bears a likeness to a design already made by an existing and very reputable Widget producer, Brand X. since discovering this i have come to the conclusion that i will still like to produce this Brand A widget, marketing it as, the Brand A widget, "its not the Brand X widget," . Therefore, in naming my product, "its not the Brand X widget," i would be using the Brand X company name as a part of my product naming and marketing strategy. Is this permissible and what are the legal repercussions that my company could possibly face in the future from its use of Brand X's name in my product naming strategy? Also, does it help that the Company trades under an acronym (ABC widget company)? There are other companies trading under the previous acronym.

I have done a preliminary search of the USPTO's online database and have found no reference to Company X in any form, and am willing to protect my use of the name legally this way, but would only want to make use of their company name for product naming and for that purposes only.

What's my first step to accomplishing this, what are my options, and what is the least amount of time can it be done if so.

 

[FlyingRon]

Trademark rights arise from use in commerce. Registration is not strictly required. Further, using their mark, even weaseled like yours is, is certainly infringing. You can expect a lawsuit. Pretty extensive litigation in the "Better Than Botox" suit, for example.

 

[blasfome21]

Trademark rights arise from use in commerce. Registration is not strictly required. Further, using their mark, even weaseled like yours is, is certainly infringing. You can expect a lawsuit. Pretty extensive litigation in the "Better Than Botox" suit, for example.

If its "weaseled" its been don already. do you know of any particular cases that i can study?

 

[FlyingRon]

Done already doesn't mean it's right. Google the trademark I already posted. It's not the only case.

 

[quincy]

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

. . .my new widget bears a likeness to a design already made by an existing and very reputable Widget producer. . . i will still like to produce this Brand A widget, marketing it as, the Brand A widget, "its not the Brand X widget," . . .in naming my product, "its not the Brand X widget," i would be using the Brand X company name as a part of my product naming and marketing strategy. . .

As FlyingRon said, this marketing plan of yours is bound to attract a lawsuit. Comparative advertising, if truthful and non-deceptive and claims can be substantiated, is allowable, as long as there is no likelihood a consumer would become confused over any affiliation between your company and the other company. But trading off the recognized brand name as a way to promote your own is not an allowable use of another's trademark.

Is this permissible and what are the legal repercussions that my company could possibly face in the future from its use of Brand X's name in my product naming strategy?

The legal repercussions can include, but are not limited to, an injunction (a cease and desist court order), a dilution claim (tarnishment, blurring), an unfair competition claim, a willful infringement claim.

Also, does it help that the Company trades under an acronym (ABC widget company)?

Help for you for your proposed use? Probably not.

Your use of another's trademark for marketing your own product and service can lead the original trademark holder to seek relief through the FTC and through federal and state courts under anti-dilution and trademark laws. The "Better than Botox" action that FlyingRon mentioned is one case you can review, and you can check out Savin Corp v The Savin Group, 391 F.3d 439 (2d Cir 2004) and Deere & Co v MTD Prods, Inc, 41 F.3d 39 (2d Cir 1994) and Big O Tire Dealers, Inc v Goodyear Tire & Rubber Co, 408 F.Supp. 1219 (D. Cal 1976) affirmed 561 F.2d 1365 (10th Cir 1977) for three additional suits that touch on the issues your proposed use raises and to get an idea of the possible outcomes of your use.

What's my first step to accomplishing this, what are my options, and what is the least amount of time can it be done if so.

Your first steps should be to an IP attorney's office. A review of cases is all well and good, blasfome21, but what you REALLY need is a review of your own plans. The attorney you see will no doubt advise against your proposed use of the existing trademark as part of your own.

 

[blasfome21]

thanks Quincy.

My only goal was to get near the line but not cross it.
would i get into any trouble if i called my product the brand A "its not that Bulls#*t" widget?

it would have been fun saying the other companies name though.

weaseled......smh

 

[quincy]

thanks Quincy.

My only goal was to get near the line but not cross it.
would i get into any trouble if i called my product the brand A "its not that Bulls#*t" widget?

You're welcome, blasfome21.

It is generally safer legally, by the way, to have as a goal staying far away from the line.

Good luck with your company.

 

[blasfome21]

You're welcome, blasfome21.

It is generally safer legally, by the way, to have as a goal staying far away from the line.

Good luck with your company.

advice understood and accepted.

thanks.

 

[quincy]

You're welcome.