Service Mark and Company Name

[vne147]

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

Hello everyone. I have a question regarding a service mark.

In the very near future I will be starting an engineering company. My partner and I like the name Signum. We plan to call ourselves Signum Engineering Services or Signum Technologies, something along those lines. We plan to incorporate either as an LLC or an S Corp.

The only problem is that Mobil has service marked Signum for an oil analysis service they provide in the industrial lubricants industry. Unfortunately, I know nothing more about that.

The company I'm starting will work in the aerospace and oil & gas industries. We will do work in the area of control systems, electronics, operations, and software.

So my question is, will our company name of Signum violate Mobil's rights? More importantly, should I worry that I'll get sued?

Thanks in advance for any thoughts you can provide.

 

[Zigner]

Mobil spends more each year on toilet paper for its attorneys than you will take in as revenue in a year. Yes, if you use a name that they have the rights to, you can expect to hear from them eventually.

 

[vne147]

Mobil spends more each year on toilet paper for its attorneys than you will take in as revenue in a year. Yes, if you use a name that they have the rights to, you can expect to hear from them eventually.

I knew there was no way I'd win if we had to go to court. I just wasn't sure if the fact that we will be in a different industry made a difference. What if we went with an alternate spelling like Sygnum for example?

Thanks for your help.

 

[quincy]

I knew there was no way I'd win if we had to go to court. I just wasn't sure if the fact that we will be in a different industry made a difference. What if we went with an alternate spelling like Sygnum for example?

Thanks for your help.

I think that an oil and gas business would probably be deemed too similar to a Mobil oil analysis business to be able to register either Signum or a homophone of Signum for your company trademark. It would also, more than likely, attract the attention of Mobil or Signum attorneys.

It is best to pick a name that is uniquely your own. A trademark's purpose, afterall, is to distinguish one business from that of all others.



edit to add:
There are currently 17 "live" Signum trademarks listed with the USPTO (out of Germany, Italy, Argentina and the U.S.), used to identify Mobil's lubricants/oil analysis business, a photography business, a computer-related business, a clothing business, a scientific equipment business, an olive oil business, a motor vehicle business, a fertilizer business ... and there are already companies named Signum Technology, Signum Engineering, Signum Biosciences, Signum Systems.

 

[vne147]

Please excuse my ignorance. I am sure these are very basic concepts to a lot of people but they’re new to me. I’ll try to summarize this scenario as I understand it.

Mobil registers Signum as their service mark to make the service they provide uniquely identifiable in their industry and to give consumers confidence that when they see the name Signum, in essence, they’re getting the real deal.

You say that I should not start an engineering services company using the name Signum or even Sygnum because Mobil has registered it as their service mark. Mobil would ultimately find out, make me stop, and possibly force me to pay damages in the process.

But then you tell me that there are 17 other companies all using Signum or variations thereof for their trademarks.

So my question is, why is Mobil not suing them and/or, why are they not constantly suing each other?

There are only so many words in the English language. Signum for example is a mathematical operator that has probably been around longer than the intellectual property laws that allow only certain companies to use it. Wouldn’t any company trying to sue another for using the same name have to demonstrate that they incurred some sort of loss as a result?

I’m not disputing that you’re giving good advice and that the safest route here is pick something that no one else is using. I’m just struggling to understand how 17 different companies can all be using similar names and how that’s OK, but if I started a company using that name, it would not.

Thanks for your input and clarification. I know math and physics, legal principles, not so much.

 

[Zigner]

But then you tell me that there are 17 other companies all using Signum or variations thereof for their trademarks.

Read it again - MOBIL has 17 live trademarks for Signum.

 

[vne147]

Read it again - MOBIL has 17 live trademarks for Signum.

That's not how I read it. Mobil was just the first one in the list that of businesses that Quincy mentioned. You're telling me that Mobil has a photography business, a clothing business, and an olive oil business?

 

[quincy]

Please excuse my ignorance. I am sure these are very basic concepts to a lot of people but they�re new to me. I�ll try to summarize this scenario as I understand it.

Mobil registers Signum as their service mark to make the service they provide uniquely identifiable in their industry and to give consumers confidence that when they see the name Signum, in essence, they�re getting the real deal.

You say that I should not start an engineering services company using the name Signum or even Sygnum because Mobil has registered it as their service mark. Mobil would ultimately find out, make me stop, and possibly force me to pay damages in the process.

But then you tell me that there are 17 other companies all using Signum or variations thereof for their trademarks.

So my question is, why is Mobil not suing them and/or, why are they not constantly suing each other?

There are only so many words in the English language. Signum for example is a mathematical operator that has probably been around longer than the intellectual property laws that allow only certain companies to use it. Wouldn�t any company trying to sue another for using the same name have to demonstrate that they incurred some sort of loss as a result?

I�m not disputing that you�re giving good advice and that the safest route here is pick something that no one else is using. I�m just struggling to understand how 17 different companies can all be using similar names and how that�s OK, but if I started a company using that name, it would not.

Thanks for your input and clarification. I know math and physics, legal principles, not so much.

Actually, Zig, Mobil has only one of the Signum's registered. The other 16 are registered by other companies - but they are all in different fields and many are from different countries. I think I worded my prior sentence in a confusing way.

Exxon Mobil registered Signum in 2009, after 8 years of use to identify their testing analysis lubricants business.

The difference with your Signum, vne147, is that your business could potentially be seen as competing with Mobil, whereas a photography business and a fertilizer business are not.

In addition, you have a problem with companies that are already using your proposed names of Signum Engineering and Signum Technologies, so those names if used by you would confuse in consumers' minds which company is which.

It is possible for companies, products or services to share the same trademarked name, and logos of companies are often similar. There are no legal challenges made to these dual uses because there is no consumer confusion generated. The consumer market is different. ABC as a broadcasting company, for example, is unlikely to be confused with an ABC appliance warehouse.

I doubt if you would be able to register your Signum name, in other words, without opposition from more than one already existing Signum - Mobil, because your business is similar to theirs, and others because the same name could direct traffic away from the first company to your company, causing confusion.

As for "there are only so many words in the English language," estimates range from Oxford Dictionary's estimate of 171,476 in current use with 47,156 obsolete words and 9500 derivative words, to The Global Language Monitor's 2014 estimate of 1,025,109.8.* And these estimates do not include invented words or combined words used by many companies to distinguish their company from all the rest. Plenty of words to go around.



*sources: http://www.languagemonitor.com/number-of-words/number-of-words-in-the-english-language-1008879/ and http://www.oxforddictionaries.com/us/words/how-many-words-are-there-in-the-english-language

 

[Zigner]

Actually, Zig, Mobil has only one of the Signum's registered.

I stand corrected.

 

[quincy]

I stand corrected.

You can take a seat. My sentence was a confusing one.

 

[vne147]

I’m beginning to understand, I think. Let’s just say for example that I formed a company called Signum but didn’t try to register the name. If one of these other companies found out I was using it, they could claim that I was illegally using their trademark. But, in order to make me change my name wouldn’t they have to demonstrate to a judge that it caused consumer confusion? Also, in order to recover damages, wouldn’t they have to demonstrate that they lost business as a result? I’m betting that if that company was Mobil, I’d lose before I stepped foot in a court room but I’m just curious.

Am I also correct that consumer markets aren’t only separated by industry but also by geographic location? For example, ABC Plumbing in PA could exist without being confused with ABC Plumbing in AZ if both businesses only operated locally. If one company tried to claim consumer confusion and it went to court, they’d have a tough time proving consumers were confused between the two companies. I mean who in AZ would call a plumber in PA?

After this discussion, my partner and I will likely go a different direction on our name. So, at this point my questions are more for my own understanding than anything else.

Thanks for your help and explanations.

EDIT: I forgot to mention that I concede your point about the English language. There are many words out there. I did google “random word of the day” just to see what it came up with but Nummary Engineering Services didn’t have much of a ring to it. Regardless, I’d like to formerly extend and apology to you, English language, for failing to acknowledge your richness and depth. To demonstrate my sincerity, I’ll continue speaking you for the remainder of my life.

 

[quincy]

I�m beginning to understand, I think. Let�s just say for example that I formed a company called Signum but didn�t try to register the name. If one of these other companies found out I was using it, they could claim that I was illegally using their trademark. But, in order to make me change my name wouldn�t they have to demonstrate to a judge that it caused consumer confusion? Also, in order to recover damages, wouldn�t they have to demonstrate that they lost business as a result? I�m betting that if that company was Mobil, I�d lose before I stepped foot in a court room but I�m just curious.

Am I also correct that consumer markets aren�t only separated by industry but also by geographic location? For example, ABC Plumbing in PA could exist without being confused with ABC Plumbing in AZ if both businesses only operated locally. If one company tried to claim consumer confusion and it went to court, they�d have a tough time proving consumers were confused between the two companies. I mean who in AZ would call a plumber in PA?

After this discussion, my partner and I will likely go a different direction on our name. So, at this point my questions are more for my own understanding than anything else.

Thanks for your help and explanations.

If you named your company "Signum" and one of the other "Signum" companies felt you were infringing on their rights, they would send either a cease and desist letter, informing you that you were infringing on their rights, or they would sue you, under any one of a number of legal causes of action (trademark infringement, unfair business practices, dilution, whatever). A cease and desist would be the most likely first step a company would take - and then you would have to decide whether the risk of a lawsuit was worth ignoring the C&D, and you would have to decide if you had a defense that would hold up against the other company's claims.

You are correct in your understanding of consumer markets and geographic locations. However, when a trademark is federally registered, the company with the federally-registered trademark could prevent your use of their trademark in any U.S. location. Their success in preventing your use of the mark could come if their mark was used prior to your use of the mark or if their mark was registered prior to your use or if consumer confusion can be demonstrated. If you used the name in Texas before they used the mark or registered the mark, you could be allowed to continue the use of the name in your geographic region.

But facts really matter.

You can have the facts of your proposed company plans reviewed by an attorney in your area, but choosing a unique name for your company is, I believe, the smartest and legally safest action for you to take. When you can avoid potential legal problems at the start, it makes sense to do so.

Good luck.