Can I use this business name for my shoe company?

[Elizasmom]

I am about to start my own small children's shoe line with unique, fun imported shoes for preschoolers and toddlers. I have been brainstorming for a perfect name for weeks, when a good one finally came to me. The name sounds made up and meaningless, but is actually a little-known word from history that has been used to mean something like "someone who marches to their own drumbeat" (perfect for my unique shoes). So, it's a real word that hardly anyone has ever heard of that sounds like a silly made up word (I don't want to state the word here, but it's along the lines of "flapdoodle" or "diddledumb", that kind of thing).

Well, I went to the USPTO site, and, to my surprise, the word has an existing mark and the "goods and services" it was used for are "men's shoes". It was first registered by this shoe company in 1976, and renewed in 1997. I don't think the company goes by this name. I think it's that they had a line or style of men's shoes by this name. I searched all over the internet, and if they are still making shoes with this name, they must not be very well known. I can't find a thing.

Anyway, here's my question. Are children's shoes and men's shoes different enough that it wouldn't be a problem for me to use this name? It's not as though my shoes would be competing with theirs, and I don't think it would cause confusion. Could they make that argument and cause trouble/hassles for me? My shoes would be sold nationwide via the internet, based in Virginia. Thanks for any help!

 

[divgradcurl]

Are children's shoes and men's shoes different enough that it wouldn't be a problem for me to use this name?

Maybe.

It's not as though my shoes would be competing with theirs, and I don't think it would cause confusion.

Confusion isn't totally based on competition -- it's whether or not a typical consumer would be confused.

Could they make that argument and cause trouble/hassles for me? My shoes would be sold nationwide via the internet, based in Virginia.

Sure they could -- if someone were to type the word into Google expecting to find the men's shoes, and they were taken to a link with your kid's shoes, that's oftentimes enough to show "confusion."

You should sit down with a local attorney, who can review all of the facts (including the actual words in question) and advise you accordingly before you spend a lot of money developing this new brand.

 

[Elizasmom]

Thanks. Since my last post, I found that another company is selling baby products (not shoes, but carriers and blankets) under this same name, but they have not registered it. I guess I better drop it!

I do have another name idea you may have an opinion about. Let’s say there is a company/product named “DoodleBugs” (assume this is a real word for a real animal) selling baby products (maternity, clothes, etc., not shoes). They have the name registered (although it’s registered with a graphic logo containing the word, not just the word- if that means anything). I want to use a made up word that does a flip flop on their name-----“BoodleDugs” for example. Their word is a noun for a real creature, while my word switches two of the letters and is a fake word that captures some of the fun sound of the real word. Could this pose a problem for me? By the way, my word was registered in the past for baby products (including shoes) but was canceled 8 years ago.

 

[divgradcurl]

Thanks. Since my last post, I found that another company is selling baby products (not shoes, but carriers and blankets) under this same name, but they have not registered it. I guess I better drop it!

I do have another name idea you may have an opinion about. Let’s say there is a company/product named “DoodleBugs” (assume this is a real word for a real animal) selling baby products (maternity, clothes, etc., not shoes). They have the name registered (although it’s registered with a graphic logo containing the word, not just the word- if that means anything). I want to use a made up word that does a flip flop on their name-----“BoodleDugs” for example. Their word is a noun for a real creature, while my word switches two of the letters and is a fake word that captures some of the fun sound of the real word. Could this pose a problem for me? By the way, my word was registered in the past for baby products (including shoes) but was canceled 8 years ago.

Again, the issue is going to boil down to whether or not your name would result in confusion or not. This is not a simple, cut-and-dried question -- to get an accurate answer, you will need to have someone who knows the real word we are talking about and can analyze other related trademarks in light of current caselaw. That's the only way you are going to be able to get a definitive answer, and that's why I recommended talking with an attorney.

As far as your canceled mark, it's really irrelevant at this point -- unless you've continued to use the mark all of these years, the fact that you had a registered mark once isn't really going to play any role in whether you can register the mark again.