Legal Question in Intellectual Property in Colorado

A company has branded one of their personal electronic devices a name that I want to use as my own business name, however, I would have the word "Nutrition" after it. I will be selling supplements and vitamins. Is there any reason on earth that I would be denied a trademark by the USPTO. There is obviously no confusion of the type of products associated with the name.


Asked on 1/31/19, 4:32 am

1 Answer from Attorneys

Frank Natoli Natoli-Legal, LLC

The more closely related the goods and services the more likely a conflict is possible. It all comes down to market confusion. We are not confused between Delta Airlines versus Delta faucets, for example. But there is no way to know in your case without clearing the mark. The mark must be cleared properly before you start investing in it. I will offer more on that below.

In some cases where famous marks are concerned, they can use "dilution" arguments in their favor even when use of a similar mark is in a completely different industry. For example, I don't care what you sell, if you try to call it the "McWhatever" you will hear from McDonalds lawyers.

Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CO secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.

If you need more clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.

Our firm is now referred by the American Bar Association (see under the New York section): http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html

Our AVVO profile and reviews can be found here as well: https://www.avvo.com/attorneys/10007-ny-frank-natoli-1791330.html

Kind regards,

Frank

www.LanternLegal.com

866-871-8655

frank@lanternlegal.com

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Answered on 1/31/19, 6:50 am


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