Selling Under Trademark Name With Likelihood of Confusion?

[TechnicGeek]

According to USPTO database my findings are that applicant did not respond to office action and never registered trademark despite using "TM" sign on it's production and being in same goods category. According to state's commercial recording division company changed it's trademark name later and conducted business under that name until late 80s when became defunct.

Am I okay to start selling goods online (which I believe falls under interstate commerce) under similar trademark i.e. almost same spelling (at least 90% similarity), phonetically same and same international goods category? Does common law trademark have jurisdiction only in state it was registered despite also having interstate commerce coverage?


What is the name of your state (only U.S. law)? Outside of US with no business entity presence in US

 

[quincy]

According to USPTO database my findings are that applicant did not respond to office action and never registered trademark despite using "TM" sign on it's production and being in same goods category. According to state's commercial recording division company changed it's trademark name later and conducted business under that name until late 80s when became defunct.

Am I okay to start selling goods online (which I believe falls under interstate commerce) under similar trademark i.e. almost same spelling (at least 90% similarity), phonetically same and same international goods category? Does common law trademark have jurisdiction only in state it was registered despite also having interstate commerce coverage?


What is the name of your state (only U.S. law)? Outside of US with no business entity presence in US

What country do you reside in and plan to operate your business from, TechnicGeek?

In the US, unlike in many other countries, a trademark does not have to be registered with the USPTO to gain trademark rights. If the US company that used the trademark you are now wishing to use still uses the mark on goods (or services) in commerce and in the same class as yours, or still has goods (or services) in the marketplace that bear the trademark, you may be restricted from marketing your own goods in the US under the same or similar trademark (although it could be possible for you to use the same or similar trademark in other parts of the world, depending on the mark in question and all particulars).

If the US trademark is not a famous one and/or is no longer being used to identify a current company or its current or former goods or services, then you might be able to take that trademark for your own use without risk. Because specifics are important, however, and the laws of your country even more important, you should seek out the assistance of an IP professional where you live.

For further information on US trademark law, here is a link to the USPTO: http://www.uspto.gov

 

[TechnicGeek]

Thanks quincy

What country do you reside in and plan to operate your business from, TechnicGeek?

Israel

If the US company that used the trademark you are now wishing to use still uses the mark on goods (or services) in commerce and in the same class as yours,

It looks like company does no longer exist.

or still has goods (or services) in the marketplace that bear the trademark, you may be restricted from marketing your own goods in the US under the same or similar trademark (although it could be possible for you to use the same or similar trademark in other parts of the world, depending on the mark in question and all particulars).

This is on state level only is it not? That is unless they register on USPTO which gives interstate protection.

If company no longer exist, yet still has goods in marketplace sold under their trademark does that still pose a risk? Let me ask you this then; if company does not exist then this turns this issue to copyright? I mean does owner have copyright to this mark which will expire to public domain 70 years from now? Can trademark owner have case if company is no longer operational?

If the US trademark is not a famous one and/or is no longer being used to identify a current company or its current or former goods or services, then you might be able to take that trademark for your own use without risk.

The trademark on goods differs from company name slightly and it's by missing "INC" which company has like "Trademark INC"

Because specifics are important, however, and the laws of your country even more important, you should seek out the assistance of an IP professional where you live.

Are you sure IP attorney in my country is more qualified than IP attorney in US?

 

[quincy]

Thanks quincy
Israel

Thanks for providing the name of your country, TechnicGeek.

It looks like company does no longer exist.

If the company no longer exists and the company no longer has products that exist, or no longer offers services under the trademark, then you should be able to use the mark without issue. But you want to make sure your search for a trademark owner is a thorough one. Again, a trademark does not have to be registered in the US for the mark to be protected under US trademark laws.

This is on state level only is it not? That is unless they register on USPTO which gives interstate protection.

Again, no registration of any kind is necessary, state or federal. Trademark rights in the US are gained through the use of the mark as an identifier on goods or services. A trademark can be protected under both state laws and federal laws.

If company no longer exist, yet still has goods in marketplace sold under their trademark does that still pose a risk? Let me ask you this then; if company does not exist then this turns this issue to copyright? I mean does owner have copyright to this mark which will expire to public domain 70 years from now? Can trademark owner have case if company is no longer operational?

If a company no longer exists but it still has goods sold in the marketplace under the trademark, it can potentially pose a risk to anyone who wants to use the same trademark. The risk would not be a risk of infringement. A totally abandoned mark can be used. But the new user of the old trademark often has to compete with, or overcome, the memory of the old goods/services that once wore the brand.

The trademark belonging to a defunct company would not "turn" the issue into a copyright issue. If the company had a logo used as an identifier, however, the logo can potentially be protected under both trademark and copyright laws and the copyrights in a logo can survive the death of a company. It would depend on the logo and the creativity of its design.

The trademark on goods differs from company name slightly and it's by missing "INC" which company has like "Trademark INC"

The purpose of a trademark is to distinguish one company's goods or services from that of another. Only eliminating an "INC" from a name would not be enough to prevent consumers from confusing one trademark for another, if the goods or services being offered are in the same class or the trademark was a famous one.

Are you sure IP attorney in my country is more qualified than IP attorney in US?

I am sure that IP attorneys in Israel are as qualified as IP attorneys in the US. But you need to be concerned with the trademark laws in your country first. It will be under the laws of Israel that you will be sued. You can always hire a trademark attorney or agent in the US, or an international trademark attorney or agent, to do a thorough trademark search for you, though, if you are looking to register your trademark in more than one country.

Good luck, TechnicGeek.

 

[TechnicGeek]

Thanks.

Would finding trademark owner and if located, asking permission to conduct commerce under this trademark something that is worth considering? Was there ever done something like that?

 

[quincy]

Thanks.

Would finding trademark owner and if located, asking permission to conduct commerce under this trademark something that is worth considering? Was there ever done something like that?

Although there might be no need to contact a trademark owner if the trademark is no longer owned, contacting the one who was known to hold rights in the mark can potentially help you determine if there are any lingering rights in the mark or any intention by the original holder of reviving the mark. It is one way that you can find out if the trademark has actually been abandoned and that the original trademark holder is not revising the product or recovering from bankruptcy or whatever, with plans to use it again.

Proving abandonment of a mark can sometimes be difficult otherwise. You can read about abandonment of a trademark in the link earlier provided (see the Lanham Act's section 1127).

Again, though, even if you find that the mark has been abandoned by the original company, you will still need to check the marketplace for others who are operating under the same or similar names. Whether the goods or services being marketed are in the same class of goods as yours or not, there can still be a conflict.

It can be easier, as a note, to come up with a completely unique name of your own. Some of the most successful businesses have invented names - eliminating for these companies all risk of their infringing on the rights of others.

 

[TechnicGeek]

Very informative. Thank you.

Is there a chance that hypothetical scenario might happen when after a few years when all is good and quiet trademark owner can and send C&D just to get a hold of what took me years to build because he is just entitled to trademark? Or can it happen even after many years when original trademark owner is no more and someone who is very close relative of his can approach and demand it?

 

[quincy]

Very informative. Thank you.

Is there a chance that hypothetical scenario might happen when after a few years when all is good and quiet trademark owner can and send C&D just to get a hold of what took me years to build because he is just entitled to trademark? Or can it happen even after many years when original trademark owner is no more and someone who is very close relative of his can approach and demand it?

Anything is possible. Cease and desist letters are easy to draft and to send, and it is not all that difficult to file a lawsuit, whether the lawsuit has merit or not. So, even when not probable, there will always be a possibility of someone deciding to sue.

That is one reason why a thorough trademark search is wise and advised, to make sure there are no rights or lingering rights in a mark held by someone somewhere.

Because goods are marketed all over the world now via the internet, too, there are not the nice geographic limits to trademarks that once existed. A company that intends to sell their goods worldwide must be aware of not only their own local and national markets but also international markets.

At one time, there could be several different companies using the same "ABC" name to market the same "ABC" goods in different cities or states or nations, with no conflict between them because the consumer markets did not expand outside these companies' small geographic regions. Not so any more.