Trademark Question: Business Name vs. Product Line

[mechanicalbard24]

What is the name of your state? Michigan

Hello,

I have a question about trademarking. I think to best demonstrate my question/circumstance, it will be best to give an example. The following example is not my exact situation, but very similar in nature.

Let's say I start an LLC with the intention of distributing shoes with my company's logo being the main selling point of the shoe. I register the LLC in my state, obtain EIN, and design the logo to perfection. For this example let's say I named my company Glycerin Footwear LLC.

Next I go to the USPTO website to conduct a trademark search, and I see that another company (for example's sake I will use Brooks Sports, Inc.) has registered a standard character mark for the word Glycerin, and uses it for a particular model of shoe in their lineup of shoe variations. In this case, it is not the nationally recognized name of their company/brand, but a model of shoe under the corporation's umbrella of products.

My question is this: since my company name is the same as the model name of one of Brooks Sports, Inc.'s shoe models, would I be able to use my branding on my own shoe products given that Brooks has a standard character mark on the word Glycerin? (For reference the serial number for the particular trademark I am using in this example is 88076337 - searchable on the USPTO patent site.) Can a common word be monopolized in this way so that someone else couldn't even create a business under that name with a stylized logo in the same industry? I wouldn't think it would cause consumer confusion since they are Brooks shoes, and the fictional company in this example is called Glycerin shoes?

As I said, my case is for a different word and product, but a very similar situation. I would like to be able to register the logo that I spent hours designing on my products, but there is a fairly large corporation which has a trademark on the word that happens to be the name of my own company for the same type of product. My product does incorporate font, but there is definitely an artistic design element to it as well. It may be important to note that this company only calls their line this name, they do not print the word on the parts of the product which can be seen when it is worn by a consumer. Instead, the product produced by said company has their nationally recognized logo, which is used for all of their products outside of this particular line, printed on it.

Please help me understand if there is a workaround for this, as I am anxious to produce my products with my company's logo on them. Maybe if I did something similar and called the line by a name other than my company name, but printed my company logo on it? I have not yet registered a trademark for my logo, as I am waiting for an answer to this question.

Thank you in advance for any advice! I truly appreciate it!

 

[Taxing Matters]

The problem with these kinds of hypothetical questions is that in the world of trademarks the specific names/marks at issue as well as the respective products/services of each firm and the geographic areas in which they operate are incredibly important. While you may think that there are no significant differences between the example you used and your real situation, there certainly could be one or more important differences.

That said, if the word you have in mind is one that is associated with with the products of that other company and that other company is in the same line of business as you are then there is a real risk that you may infringe that other company's mark by using that same word to market products in the same class of goods. For example, when the U.S. Polo Association wanted to get into selling clothes and apparel and used the word "Polo" on the products, it drew a challenge by the holder of the Polo trademark, Ralph Lauren Corp. The lawsuit was partly successful; Ralph Lauren was able to get an order that restricted how the Polo Association could use the term Polo on its products.

With all that in mind, you don't want to get advice on an internet forum for this. You want to see a trademark attorney and get advice based on the actual facts of your situation. Spending a bit of money for good legal advice is a solid investment in your business. It's what successful business people do. You don't want to spend a lot on marketing your stuff with a mark and then be faced with an infringement suit and possibly owed damages to the other company and be forced to abandon the name you'd built up and start all over again with a different name.

And one personal observation. However much you may like the word you picked out to market your product, if another company in the same industry is using that same word for its mark then you do yourself no favors in using it even if you avoid infringement claims. You'll risk too much confusion with the other company and your name won't stand out as much. In my view, a strong mark is one that is unique and stands out from the competition.

 

[mechanicalbard24]

The problem with these kinds of hypothetical questions is that in the world of trademarks the specific names/marks at issue as well as the respective products/services of each firm and the geographic areas in which they operate are incredibly important. While you may think that there are no significant differences between the example you used and your real situation, there certainly could be one or more important differences.

That said, if the word you have in mind is one that is associated with with the products of that other company and that other company is in the same line of business as you are then there is a real risk that you may infringe that other company's mark by using that same word to market products in the same class of goods. For example, when the U.S. Polo Association wanted to get into selling clothes and apparel and used the word "Polo" on the products, it drew a challenge by the holder of the Polo trademark, Ralph Lauren Corp. The lawsuit was partly successful; Ralph Lauren was able to get an order that restricted how the Polo Association could use the term Polo on its products.

With all that in mind, you don't want to get advice on an internet forum for this. You want to see a trademark attorney and get advice based on the actual facts of your situation. Spending a bit of money for good legal advice is a solid investment in your business. It's what successful business people do. You don't want to spend a lot on marketing your stuff with a mark and then be faced with an infringement suit and possibly owed damages to the other company and be forced to abandon the name you'd built up and start all over again with a different name.

And one personal observation. However much you may like the word you picked out to market your product, if another company in the same industry is using that same word for its mark then you do yourself no favors in using it even if you avoid infringement claims. You'll risk too much confusion with the other company and your name won't stand out as much. In my view, a strong mark is one that is unique and stands out from the competition.

Excellent answer, thanks millions for the response. I suppose for my purposes it may be best to just abandon that particular type of product when it comes to using my mark. My company's primary product is different from the product that has the conflict (and their trademark is quite specific about the type of product it refers to), but I wanted to expand into the area that they have their trademark in. While it is unfortunate that I may not be able to manufacture the specific items that they do with my business' name on them, it doesn't sound like it should be a problem so large that I shouldn't trademark my company's logo design and specify exactly the types of goods and services it will be printed on (as long as I exclude the goods and services specified in the other company's trademark). Would you agree that might be the best plan of action in this circumstance?

Thanks again, I truly appreciate your answer (and respect your advice on getting an attorney - I surely will when I file the actual trademark. I tend to learn as much as I can from many different resources before hiring a professional. That way I can provide them with a good amount of background and information in order to save my company some dough on the hours they require to finish the job the right way!)

 

[LdiJ]

Excellent answer, thanks millions for the response. I suppose for my purposes it may be best to just abandon that particular type of product when it comes to using my mark. My company's primary product is different from the product that has the conflict (and their trademark is quite specific about the type of product it refers to), but I wanted to expand into the area that they have their trademark in. While it is unfortunate that I may not be able to manufacture the specific items that they do with my business' name on them, it doesn't sound like it should be a problem so large that I shouldn't trademark my company's logo design and specify exactly the types of goods and services it will be printed on (as long as I exclude the goods and services specified in the other company's trademark). Would you agree that might be the best plan of action in this circumstance?

Thanks again, I truly appreciate your answer (and respect your advice on getting an attorney - I surely will when I file the actual trademark. I tend to learn as much as I can from many different resources before hiring a professional. That way I can provide them with a good amount of background and information in order to save my company some dough on the hours they require to finish the job the right way!)

It honestly depends on what the actual words are. You will be able to tell the attorney you consult what the actual words are and get a much more informed answer.

 

[quincy]

Excellent answer, thanks millions for the response. I suppose for my purposes it may be best to just abandon that particular type of product when it comes to using my mark. My company's primary product is different from the product that has the conflict (and their trademark is quite specific about the type of product it refers to), but I wanted to expand into the area that they have their trademark in. While it is unfortunate that I may not be able to manufacture the specific items that they do with my business' name on them, it doesn't sound like it should be a problem so large that I shouldn't trademark my company's logo design and specify exactly the types of goods and services it will be printed on (as long as I exclude the goods and services specified in the other company's trademark). Would you agree that might be the best plan of action in this circumstance?

Thanks again, I truly appreciate your answer (and respect your advice on getting an attorney - I surely will when I file the actual trademark. I tend to learn as much as I can from many different resources before hiring a professional. That way I can provide them with a good amount of background and information in order to save my company some dough on the hours they require to finish the job the right way!)

Here is a link to the manuals used by the trademark examiners when determining if an applicant's trademark should be registered or if registration should be denied:
https://www.uspto.gov/trademark/guides-and-manuals/manuals-guides-official-gazette
The purpose of a trademark is to distinguish one company's goods or services from those of all others, so consumers will know the origin of the goods/services.

Trademark law centers on consumer confusion. When there is consumer confusion generated because companies have used the same or similar names to identify their goods or services, that means a company failed to distinguish their goods/services adequately. A trademark infringement suit can result.

If all fast food restaurants were called McDonald's, consumers would not know where to buy their Egg McMuffins.

Your "Glycerin Footwear" trademark for shoe products could be confusing to consumers, who are likely to see the "Brooks Sports" Glycerin shoes and reasonably believe these are products of your company.

Your trademark name specifics should be personally reviewed by a trademark attorney in your area prior to going to the expense of registering the name, this if you know the name you have chosen for a trademark is already registered and in use by another.

Good luck.

 

[quincy]

This thread is from July 2019.

If you have a legal question, please start your own thread. Thanks.