I want to start an online business via shopify and someone online has already a name www.thebusiness.co (not real name) that is also a shopify accout but it's not trademarked in the US as they are located in Sweden. My business would be (www.thebusiness.com). Is there any type of legal issues that could come up if I trademark my name and buy the domain name? We don't really sell the same products either.
1 Answer from Attorneys
A name like "The Business" for trademark purposes is very problematic as it will likely be considered generic. But assuming it is a protectable trademark, it will only matter if the Swedish entity has a presence in the US.
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 HI 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.).
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence. 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.
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 phone consultation, get some insights then pick the best fit to work with.
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
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