Trademarking Names of Similar Companies in Different Industries

[WestCoasts]

I have a question regarding exactly how strict name trademarks are, in regards to crossing over between different types of businesses. I'll provide an example to explain my confusion and hesitance-

Essentially here's what happened:

I own an LLC called Wax Surfer. We are going to be a swimsuit company, called Wax Surfer. We have not yet acquired our products, and we haven't put our website up yet. But we have all of our logos and content under the Wax Surfer name. We will sell swimsuits, and we planned on also selling a few versions of t-shirts just to help promote our brand

We found a company called WaxSurfers who run surf competitions. In this case, their logo is a surfer on a wave, ours is just a surf board. They are trademarked/ registered under LLC as an "entertainment company", and we are under "clothing". However, they have recently created an online store. In the store, they sell t-shirts that say WaxSurfers and, here's the kicker, they sell one version of swimsuit.

Here's my question- are we in violation of trademark/ copyright law?

Here's my argument- They have a niche market that they cater to that only consists of very serious surfers. They exist as an entertainment company, holding competitive events in specific locations across the US. Their store is just an additive to their main business. Our company has a market to the average consumer, who taking into account very reasonable doubt is obviously not a professional surfer. Although they may sound kind of similar, our logos look very different. Our name is also different in that ours is 2 separate words and is singular. To my understanding, since they are only trademarked under entertainment, they cannot claim unlicensed rights to a separate industry. It's also very unrealistic to think that we would steal any of their customers.

 

[quincy]

I have a question regarding exactly how strict name trademarks are, in regards to crossing over between different types of businesses. I'll provide an example to explain my confusion and hesitance-

Essentially here's what happened:

I own an LLC called Wax Surfer. We are going to be a swimsuit company, called Wax Surfer. We have not yet acquired our products, and we haven't put our website up yet. But we have all of our logos and content under the Wax Surfer name. We will sell swimsuits, and we planned on also selling a few versions of t-shirts just to help promote our brand

We found a company called WaxSurfers who run surf competitions. In this case, their logo is a surfer on a wave, ours is just a surf board. They are trademarked/ registered under LLC as an "entertainment company", and we are under "clothing". However, they have recently created an online store. In the store, they sell t-shirts that say WaxSurfers and, here's the kicker, they sell one version of swimsuit.

Here's my question- are we in violation of trademark/ copyright law?

Here's my argument- They have a niche market that they cater to that only consists of very serious surfers. They exist as an entertainment company, holding competitive events in specific locations across the US. Their store is just an additive to their main business. Our company has a market to the average consumer, who taking into account very reasonable doubt is obviously not a professional surfer. Although they may sound kind of similar, our logos look very different. Our name is also different in that ours is 2 separate words and is singular. To my understanding, since they are only trademarked under entertainment, they cannot claim unlicensed rights to a separate industry. It's also very unrealistic to think that we would steal any of their customers.

From what U.S. state are you posting or, if not in the U.S., from what country are you posting? This question is one that is asked of all posters on this site. Thanks.

 

[WestCoasts]

From CT, the other company is on the west coast. However, both are registered LLC's in Nevada

 

[quincy]

. . . I own an LLC called Wax Surfer. We are going to be a swimsuit company, called Wax Surfer. We have not yet acquired our products, and we haven't put our website up yet. But we have all of our logos and content under the Wax Surfer name. We will sell swimsuits, and we planned on also selling a few versions of t-shirts just to help promote our brand

We found a company called WaxSurfers who run surf competitions. In this case, their logo is a surfer on a wave, ours is just a surf board. They are trademarked/ registered under LLC as an "entertainment company", and we are under "clothing". However, they have recently created an online store. In the store, they sell t-shirts that say WaxSurfers and, here's the kicker, they sell one version of swimsuit.

Here's my question- are we in violation of trademark/ copyright law?

Here's my argument- They have a niche market that they cater to that only consists of very serious surfers. They exist as an entertainment company, holding competitive events in specific locations across the US. Their store is just an additive to their main business. Our company has a market to the average consumer, who taking into account very reasonable doubt is obviously not a professional surfer. Although they may sound kind of similar, our logos look very different. Our name is also different in that ours is 2 separate words and is singular. To my understanding, since they are only trademarked under entertainment, they cannot claim unlicensed rights to a separate industry. It's also very unrealistic to think that we would steal any of their customers.

Your question: "Are we in violation of trademark/copyright law?" My answer: "Probably yes, should you go ahead with your plans to use the same name."

I am not sure the arguments you present will hold much weight in court, should the WaxSurfers surfer company take exception to your use of the name Wax Surfer. There will be several factors a court will look at when deciding if there has been infringement on their trademark (or logo copyright).

One factor looked at is the similarity between the trademarks. Having a space between the words and removing an "s" still makes the two trademarks confusingly similar. It is consumer confusion, or the likelihood of it, that drives most successful trademark suits.

The fact that the other company operates throughout the U.S. in a "surf-related" business, with an online store selling what you plan to sell, would put you in direct competition with them. With your proposed website sales, your market can be considered a "shared" market.

The logos will generally not pose as much of a problem because logos are often similar. Instead, it will be the name that tends to cause the most trouble. But, depending on the design of the surfer/surf board/wave logo and whether it has copyrighted elements, a copyright infringement suit could result. Again judged will be the similarity between your wave/surf board to the surfer/board/wave design.

As I see it, WestCoasts, this company can potentially stop your use of the name and, in addition, sue you for any damages suffered as a result of your use and possibly be successful with such a suit.

For a better determination of where exactly you would stand against any legal action, however, you should have the actual logos and your business plans personally reviewed by a lawyer in your area. He can research the business currently operating under the name of Wax Surfer, can research the state or federal registration of the company, compare the facts of their business with the facts of yours, and then provide you with specific advice.

Although it may cost you some dollars now for this personal review and any changes you find you need to make to your name and your product (if that is what is advised), these costs stand to be far less than defending against a lawsuit later, should one be filed against you (and I see the risk as being there).

Good luck.