I have a business selling sportswear / fitness clothing. The name of my business that I chose is already a registered trademark owned by another company. Their trademark is the name of a product they sell, specifically a textile for protecting gym walls and floors. Since I'm not in competition with them, can I use the name for my business? The only way our businesses are related are because I'm selling fitness clothing, which relates to the gym, and they are selling items related to the gym as well.
-
FreeAdvice has a new Terms of Service and Privacy Policy, effective May 25, 2018.
By continuing to use this site, you are consenting to our Terms of Service and use of cookies.
my business name is a trademark of another business's product
- Thread starter ewinn2
- Start date
Accident - Bankruptcy - Criminal Law / DUI - Business - Consumer - Employment - Family - Immigration - Real Estate - Tax - Traffic - Wills Please click a topic or scroll down for more.
I'm in Louisiana but I sell mainly online. Thanks for your reply. The business name is unique in that there is not another business with the same name. The name is, however, registered as a product.
quincy
Senior Member
If the name/trademark is registered as a product name by a company then the name is "unique" to that company's product and the holder of the registered trademark (potentially) can prevent its use by others.
PayrollHRGuy
Senior Member
Which every well could cause confusion among the public. Unless you have a big pile of cash that you are willing to turn into a small pile of cash paying lawyers you really need to come up with a unique name.
quincy
Senior Member
Trademarks are used to distinguish one company's goods and/or services from those of all others. Trademark law centers on consumer confusion, confusion that can arise when companies use the same or substantially similar names as identifiers to identify the same or substantially similar goods or services.
Two companies with identical or substantially similar trademarks will not necessarily confuse consumers into thinking one company is the other, however. There are two "Dove" trademarks, for example, with one Dove marketing soap and one Dove marketing ice cream.
These Dove companies peacefully coexist because they are not in competition with each other, their goods are not in the same class, and consumers are unlikely to mistake a bar of soap for an ice cream bar.
There are numerous similar examples.
It is potentially possible for ewinn2 to continue using the trademark he is using without legal issue. It is also potentially possible that - after investing time and money into building his brand - he is sued for infringement of the senior user's registered mark.
Because trademark holders are responsible for enforcing their rights in their mark or risk losing these rights, I suspect ewinn2's use of the same name will attract the senior user's attention and a cease and desist letter will issue.
It always will be better to come up with a trademark that is unique to you alone. If you know there is another company with the same trademark you want to use, it is best to not tempt fate and to choose a different trademark.
That said, ewinn2 can consult with a trademark attorney in his area to get a compare/contrast evaluation of the real names involved, and an opinion on the risks of using the same trademark to identify his own company.
Two companies with identical or substantially similar trademarks will not necessarily confuse consumers into thinking one company is the other, however. There are two "Dove" trademarks, for example, with one Dove marketing soap and one Dove marketing ice cream.
These Dove companies peacefully coexist because they are not in competition with each other, their goods are not in the same class, and consumers are unlikely to mistake a bar of soap for an ice cream bar.
There are numerous similar examples.
It is potentially possible for ewinn2 to continue using the trademark he is using without legal issue. It is also potentially possible that - after investing time and money into building his brand - he is sued for infringement of the senior user's registered mark.
Because trademark holders are responsible for enforcing their rights in their mark or risk losing these rights, I suspect ewinn2's use of the same name will attract the senior user's attention and a cease and desist letter will issue.
It always will be better to come up with a trademark that is unique to you alone. If you know there is another company with the same trademark you want to use, it is best to not tempt fate and to choose a different trademark.
That said, ewinn2 can consult with a trademark attorney in his area to get a compare/contrast evaluation of the real names involved, and an opinion on the risks of using the same trademark to identify his own company.
adjusterjack
Senior Member
Another alternative is to contact the other company and get written consent to use the name. Small chance of that but you never know.
Thanks everyone, especially Quincy, for the thoughtful responses. Your Dove example is exactly why I've been thinking I can use this particular name; I'm not in competition in any way with the the company. That said, I sell gym clothes, the other guy sells gym wall covers. I guess this is much more of a grey area than I initially thought. What if I were to use my logo, which is a completely unique design, with the "trademarked name" at all times? Would that change anything?
Zigner
Senior Member, Non-Attorney
Again, you really really ought to figure out a unique name. It's not whether or not you're in competition, it's whether or not the public can reasonably perceive you to be in the same field. Think about this*: Dove sells bar soap for use in the bath, and the new guy sells liquid hand soap. That's not the same thing, but the possibility for confusion is great. That's similar to what you are doing.
*I know that Dove does much more than just bar soap, but it's just an example.
*I know that Dove does much more than just bar soap, but it's just an example.
Reasonable. Thank you.
quincy
Senior Member
There will be a risk of an infringement claim from the first user if you use that company's registered trademark to identify your company.
Some company's are more aggressive than others when it comes to pursuing those who infringe on their trademark rights (or those that the trademark holder believes are infringing).
It is generally best to avoid any chance of a legal action being taken against you. You are placing yourself at risk of being sued - and this is easy to avoid by choosing a name that is not already a registered trademark and in use by another.
You can have the real names personally reviewed but I recommend you eliminate risk by finding a new name.
As a note on the Dove trademark example I provided:
Mars is the owner of the Dove mark that covers ice cream, candy, etc. and Conopco, Inc. is the owner of the Dove mark that covers beauty products, deodorants, soaps, etc.
Some company's are more aggressive than others when it comes to pursuing those who infringe on their trademark rights (or those that the trademark holder believes are infringing).
It is generally best to avoid any chance of a legal action being taken against you. You are placing yourself at risk of being sued - and this is easy to avoid by choosing a name that is not already a registered trademark and in use by another.
You can have the real names personally reviewed but I recommend you eliminate risk by finding a new name.
As a note on the Dove trademark example I provided:
Mars is the owner of the Dove mark that covers ice cream, candy, etc. and Conopco, Inc. is the owner of the Dove mark that covers beauty products, deodorants, soaps, etc.
Last edited:
Find the Right Lawyer for Your Legal Issue!
Fast, Free, and Confidential
data-ad-format="auto">