Due diligence in name filing

[Jillian314]

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

I'm investigating the availability of a name for a new business. We're in the clear with the S.O.S., and the .com domain name is available.

However, my search of TESS in USTPO did turn up a trademark of one uniquely-spelled word that would form the first half of our business name. It was filed in Delaware. The description of Goods and Services is similar to what our company would provide, although not identical. My questions:

1. To avoid confusion and infringement, is it enough that our company name would be the unique word + another word?
2. Would the addition of punctuation (say, a hyphen) in the unique word be enough to avoid confusion and infringement?
3. Is there any other way to use this uniquely spelled word without violating the trademark?

Additionally, I found a company in Washington state that uses this unique term as the first half of their name, and their description of goods and services is extremely similar to the trademark description. However, I don't believe they hold that trademark.

Thank you very much for weighing in!

 

[quincy]

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

1. To avoid confusion and infringement, is it enough that our company name would be the unique word + another word?

Generally that is not enough. Adding another name onto the end of a unique name could still confuse consumers as to the origin of the product/service being offered. For example, adding a word onto a unique name like Kodak would not stop your use from infringing on Kodak's rights, especially if the goods or services your company is offering are the same or similar to those of Kodak.

2. Would the addition of punctuation (say, a hyphen) in the unique word be enough to avoid confusion and infringement?

Generally that is not enough. Again using Kodak: Having your company name be Kodak-Creations still infringes on the rights of Kodak - this especially if you are in the photography or camera business.

3. Is there any other way to use this uniquely spelled word without violating the trademark?

There is probably not a way to use a uniquely-spelled registered trademark without violating the rights of the trademark holder, although it can depend on the particular uniquely-spelled word. Famous trademarks will be offered protection from all imitators - even the sounds of the words (e.g., spelling your company name Co-Dack) can be seen as infringing on the rights of Kodak.

If the owner of a trademark takes exception to your use of the same or similar name, a cease and desist letter can issue and a trademark infringement suit can result.

Additionally, I found a company in Washington state that uses this unique term as the first half of their name, and their description of goods and services is extremely similar to the trademark description. However, I don't believe they hold that trademark.

If this company is using the name to describe their goods/services, they are using the name as a trademark. It identifies their goods/services. There are several reasons why this company could be using the unique name on similar goods/services: One reason could be that they have not been discovered using it yet by the registered-mark holder; Another reason could be that the company used the trademark before the other company used it and federally-registered it - the trademark office could have allowed for a continued but restricted use of the mark by the original holder, possibly confining their use to a local area in the state of Washington; A third reason could be that the company with the registered trademark has provided the company in Washington with a license to use the name or the company in Washington is connected in some way with the other company ... there are other possible reasons.

You took good first steps when researching a name for your company to use as its trademark. Searching the USPTO database and searching your own state's Secretary of State database for the same or similar business names is important. You also checked to make sure the domain name is available. These are first steps in what generally needs to be a more thorough search. There are other states to consider as well as unregistered marks.

However, when you locate another company with a registered trademark on a name you wanted to use as an identifier, and when you discover their goods and services are the same or similar to those being offered by your company, it is often smartest to abandon thoughts of using the unique name as a part of your own trademark. The use would bring with it a legal risk - and you want to avoid all legal risks when you can.

Because advice on this forum is limited to what has been given us in the way of facts, and we are not given (and should not be given) the real names in question, you should seek out the help of an IP professional in your area to see how these real names involved can potentially change what has been provided you here in the way of general information. I think, based on what you have said here, though, that you might want to find a new name - perhaps a name that you invent yourself, so there is little chance of infringing on anyone else's rights.

Good luck, Jillian314.