Apparel conflict for similar names but different industries

[quincy]

The similarity is in the name - Company X vs Company X Widgets (the "Company X" portion is simply an adjective and we even work with a few other "Company X....." named business who enjoy sharing markets). He makes T shirts that say "Company X" in plain text and our logo is slightly stylized Company X Widgets in plain text with some embelishment around it as well as a "Made in ______", the "made in _____" part seems to me like it would clear any confusion right up since our companies are in different locations. I don't know if this is relevant but the USPTO has this logo itself as a supporting document for our trademark.

Right now we either give the apparel away (just shirts for now although we do have some other Widget-related items with our logo that we give out) or sell it basically at cost if we go to any events just to make our money back but we get a lot of requests so we are indeed planning on having an online store at our website. I would say that our markets have nothing to do with each other; our widgets have nothing remotely to do with clothing.

Thanks a lot for your time! I'm sorry the vagueness is making it hard to discuss and although I'm quite irritated by the situation, objectively I find it kind of an interesting scenario. Honestly the "Company X" part is an adjective like I said (it's only one word), so I'm a bit surprised that they were able to get a trademark on it at all.

Okay. I am going to use something other than X's to see if what I am saying is what you are saying.

There are two famous companies that use the word "Dove" as a trademark.* Both marks are federally registered marks. There is Dove ice cream and there is Dove soap. These Dove companies can operate using the same trademarked name because they market different goods. No consumer (I hope) will confuse a Dove ice cream bar (food product) with a bar of Dove soap (cosmetic product), so one company does not compete with the other in the marketplace.

That could change if, for some reason, Dove ice cream decides (perhaps as a promotional gimmick) to start marketing soap in the shape of ice cream bars. The market between soap and ice cream, which up until that point had been nicely separate, now overlap and can create a legal dispute between the Doves. The two Apples had this problem.

In your case, you and the other company can operate using the same trademark because your goods/services do not overlap. Widgets are not Clothing, and consumers are unlikely to confuse one with the other. However, if the clothing company starts selling widgets under its name, or you start selling clothing under your name, the markets overlap and consumers can become confused as to the origin of the products and an infringement suit can result.

If you know the other company believes your tee-shirts infringe on their rights, and you are not in the business of selling tee-shirts anyway, a simple solution is to give away key chains or baseball caps or teddy bears with your name/logo on them instead of clothing items. This avoids any trademark dispute. You will not be competing with the other company.

If you can't find a way to resolve the product overlap with the company of the same name in an amicable way, you could find yourself embroiled in a costly lawsuit that challenges your use of the trademark.

You can review, and I recommend you review, the actual names and tee-shirts with an attorney in your area to see if the other company has a legitimate complaint. If not, the attorney you see can draft a letter indicating as much to the other company. If so, you might want to pull all infringing tee-shirts.




(as to your "first to market" comment: the first to use a trademark in commerce will (generally) be considered presumed owner of the mark under U.S. trademark laws, but in many other countries it will be the "first to register" a trademark who will be the owner)




*The word "Dove" is a simple word but it is considered a strong mark when used as an identifier for Dove soap or Dove ice cream because it is an arbitrary mark. Doves have nothing to do with soap or ice cream. Arbitrary marks are inherently distinctive and, for this reason, arbitrary marks are entitled to the highest degree of protection available under trademark laws. Other examples of arbitrary marks: Apple (records/computers), Penguin (books), Arrow (shirts).