What is the name of your state (only U.S. law)? N.Y.
We are based in the uk and sell a product called "Tickle Plant", a box of soil with (Mimosa-pudica) seeds.
A company in the US have a trademark on "Tickle Me Plant".
Can we continue to use tickle plant with the "me"?
Any ideas.
Tickle Plant is the name often used to identify the mimosa pudica plant. For that reason, you can
probably use "tickle plant" to
describe your product without a problem. It has become a familiar descriptive term for the plant.
"TickleMe Plant," however, is a U.S. registered trademark, so you would be risking an infringement or unfair competition lawsuit if you used that name to market your own seeds (at least in the U.S).
If the "TickleMe Plant" company is marketing their seed products in the U.K. already, and if the company has
registered their trademark in the U.K. already, then you should definitely not add the "Me" when naming and marketing your own seeds.
If the U.S. "TickleMe Plant" company has
not registered their trademark in the U.K. and is not currently marketing their product in the U.K., it is
potentially possible for another "Tickle Me Plant" company to have this name registered in the U.K. The U.K. company could then (potentially) prevent the U.S. company from expanding their market to include the U.K. territory. The company would not be able to market their product, however, in the U.S.
One major difference between U.S. trademark law and U.K. trademark law (although there is more than one difference) is that, in the U.S., rights in a trademark will (generally) belong to the first to
use the mark in commerce. In the U.K. (and in many other countries), it is the first to
register the mark who (generally) has rights to the mark.
That said, because the TickleMe Plant company advertises on the internet and offers their product for sale over the internet, I would avoid adding "Me" to your own company's name. Instead of using "tickle" at all, I suggest you come up with a unique name as a company identifier, perhaps working with "mimosa pudica," the scientific name.
Before starting any new company, it is always wise, and strongly advised, to have an attorney in your area personally review all facts.
For more information on registration of a mark in the U.K., you can go to
http://www.trademarkregistration.org.uk/. For more information on U.S. trademark laws, you can go to the official U.S. government website, which has a wealth of information:
http://www.uspto.gov.
Good luck.
