Can I trademark this name?

[SophieTheCat]

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

I'm using a business name that I thought was not trademarked because I'm using the plural of this word and the word that is trademarked is singular. I was then told that words are considered identical regardless of plural or singular. We are selling different types of products so I was told that more important. If the trademarked name is selling cosmetics and I am selling vitamins, is that different enough to be able to trademark my form of the business name?

 

[quincy]

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

I'm using a business name that I thought was not trademarked because I'm using the plural of this word and the word that is trademarked is singular. I was then told that words are considered identical regardless of plural or singular. We are selling different types of products so I was told that more important. If the trademarked name is selling cosmetics and I am selling vitamins, is that different enough to be able to trademark my form of the business name?

Adding an "s" to the end of an existing trademark will not prevent you from being sued by the trademark holder, if consumer confusion is likely to occur as a result of your use of the same name.

That said, there are many businesses operating under the same or similar names without a problem (think "Apple" and "ABC"). This is because the scope of their businesses is different - they offer different products or services and cater to a different consumer.

Whether your cosmetics name will pass a trademark examiner's inspection so that you can register it will depend on a lot of facts and factors, however. One factor is the name itself and one factor is how famous the vitamin trademark is. The more unique the name used by the vitamin company the less likely you will be able to register it with the trademark office. The more famous the vitamin trademark, the better chance of an infringement action being taken against you if you use the same name as an identifier for your cosmetics business, even if your business does not overlap with that of the vitamin company.

As a note: You do not "trademark" a name. The name you use to identify your business product or service is a trademark just by the use of it in commerce. However you can register the name (your trademark) to gain added protection for it, should it be infringed. In other words, you do not have to register a trademark.

Because registration is not required for a trademark to have protection under the law, it can be important to do a thorough trademark search prior to using a name to identify your business or your business products. The federal registry is a good place to start a search, but you also need to search state databases for state registration, and you need to search the marketplace for those operating under the same name without registration. A trademark search company can help with this time-consuming and often difficult task.

For information on trademarks, here is a link to the United States Patent and Trademark Office, where you can also do a search for trademarks already registered: http://www.uspto.gov

Good luck.




edit to add: note that my "Apple" example is probably not the best possible one for me to use, as single317dad has pointed out below.

 

[SophieTheCat]

Quincy,

Thank you very much! I did do a TESS search on the uspto.gov website. Am I able to do any other more intensive search myself or must I hire a lawyer to do this? I'm hesitant start filing the paperwork to register the trademark before knowing if it's likely to be accepted. Thank you for the explanation of "registering a trademark", I was using those terms wrong.

I've spoken to a few lawyers and they all want me to pay a very large fee, $800+ to do everything. Can I pay someone to just do the thorough research portion and give me advice on if I should file?

 

[quincy]

Quincy,

Thank you very much! I did do a TESS search on the uspto.gov website. Am I able to do any other more intensive search myself or must I hire a lawyer to do this? I'm hesitant start filing the paperwork to register the trademark before knowing if it's likely to be accepted. Thank you for the explanation of "registering a trademark", I was using those terms wrong.

I've spoken to a few lawyers and they all want me to pay a very large fee, $800+ to do everything. Can I pay someone to just do the thorough research portion and give me advice on if I should file?

It is not necessary to have an attorney work with you either on your trademark search or on your registration. Having an attorney can help to ensure your trademark will not run into problems by infringing on another mark, perhaps, and having an attorney can help ensure your trademark registration application will not be rejected by the trademark office, perhaps - but if your business is limited to cosmetics (so classifying your mark is not difficult) and if there is only one "same or similar" name showing on a TESS search, you can probably do the work yourself without an attorney's assistance. The Trademark Office has a lot of information for those filing an application and you can make use of the services they offer for free.

One way to do a "cheap" search by yourself is to do an internet search of the name. This will turn up a lot of companies who may be using the same name for their business, although it probably won't catch all. Trademark search companies will do a more thorough search of state databases and, although I haven't done a fee comparison, I would assume they are far less expensive than hiring an attorney to do this for you.

Good luck with your business.


(I just noticed I mixed up the cosmetics/vitamins example you used, making you the cosmetics business instead of the vitamins business. . . .oops )

 

[single317dad]

As an excellent (and famous) example of what can happen when two companies share similar trademarks and maybe/sorta overlap in their business activities, Apple Corps v Apple Computer is a mandatory study:

https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

http://www.cnet.com/news/apple-now-officially-owns-beatles-apple-corps-logo/

http://www.cnet.com/news/apple-now-officially-owns-beatles-apple-corps-logo/

http://sites.udel.edu/cisc356/2014/04/21/apple-corps-v-apple-computer-1978-2006/

http://sites.udel.edu/cisc356/2014/04/21/apple-corps-v-apple-computer-1978-2006/

 

[quincy]

Right. The Apple suits are educational, and I probably should stop using Apple as an example of companies that use the same trademark. I think I will start using Dove.

At the start, there was little problem with consumers distinguishing one Apple company from the other. No consumer confusion was generated. One company was strictly music and operated out of the UK and one was strictly computers operating out of the US. It was when the markets started to overlap and the companies each started to expand and agreements made between the companies were breached that problems (and lawsuits) arose.

With most trademarks, sharing a name only becomes a problem when the products or services are the same or similar and the target audience is shared. Or when one trademark holder might believe there is a problem.

It is always best for a company to pick a name that is unique to that company alone - but sharing a name does not have to be ruled out entirely and there are many names that are shared without causing any legal difficulty. As with everything in law, though, the specific facts matter.

 

[SophieTheCat]

Right. The Apple suits are educational, and I probably should stop using Apple as an example of companies that use the same trademark. I think I will start using Dove.

At the start, there was little problem with consumers distinguishing one Apple company from the other. No consumer confusion was generated. One company was strictly music and operated out of the UK and one was strictly computers operating out of the US. It was when the markets started to overlap and the companies each started to expand and agreements made between the companies were breached that problems (and lawsuits) arose.

With most trademarks, sharing a name only becomes a problem when the products or services are the same or similar and the target audience is shared. Or when one trademark holder might believe there is a problem.

It is always best for a company to pick a name that is unique to that company alone - but sharing a name does not have to be ruled out entirely and there are many names that are shared without causing any legal difficulty. As with everything in law, though, the specific facts matter.

Thank you. This is encouraging. I'm no Apple and this other company does not seem very big or popular, especially since they don't even own a domain with their name or have an online presence. Do you think it would be foolish to continue business for a while until I'm actually making enough money to justify paying to have my business trademark registered? I have an LLC in this name and I was thinking the worst that could happen is they send a cease and desist letter, and then I'd just have to stop selling my products under that name, and could change the name going forward, is that probable? From what you've said, it's seems like I'm fine using it anyways, because we sell different products, but I don't really want to put up the expense to register it quite yet.

 

[quincy]

Thank you. This is encouraging. I'm no Apple and this other company does not seem very big or popular, especially since they don't even own a domain with their name or have an online presence. Do you think it would be foolish to continue business for a while until I'm actually making enough money to justify paying to have my business trademark registered? I have an LLC in this name and I was thinking the worst that could happen is they send a cease and desist letter, and then I'd just have to stop selling my products under that name, and could change the name going forward, is that probable? From what you've said, it's seems like I'm fine using it anyways, because we sell different products, but I don't really want to put up the expense to register it quite yet.

Very few companies are like the Apples (or like Disney or like McDonald's).

It is up to you to decide whether to register now the name you have chosen for your company or wait until later to file. There is no need to register at all, although registration provides you with some advantages should your mark be infringed by another.

Generally the first step any trademark holder will take when they find their mark infringed (or believe their mark is infringed) will be to send a cease and desist letter. This is the easiest and cheapest way to notify the other user of the infringement and perhaps resolve the trademark dispute without the need to go to court (which can get costly quickly). That said, sending a cease and desist letter before filing an infringement suit is not a requirement.

Following is a link to the 2015 Trademark Manual of Examining Procedure from the USPTO website. On the home page, to the left is an index. From the Index, you can click on Substantive Examination to find factors considered by the trademark examiner in his review of a trademark application. Section 1207 et seq speaks to Likelihood of Confusion (second link below).

It is a LOT to read but it may provide some clarity (or possibly confuse you more . . . ).

http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml

http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/d1e2.xml#/manual/TMEP/current/TMEP-1200d1e5036.xml

A personal review by an IP attorney in your area is never a bad idea, by the way, especially when you have a business to preserve and protect. That said, I understand that attorneys are an expense not everyone's budget can handle.

Good luck once again.