Launching a service based business. My business name is already in use and trademarked in different countries and here in the USA. Can I still use my name if its similar but different? An example below.
My business: Puppys NYC
Trademarked names: Puppys Production, Puppys World, Puppys, Puppys Pets, Puppy
Thank you for your help
2 Answers from Attorneys
The question really cannot be addressed here and never in the hypothetical.
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 NY 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.
Our firm is now referred by the American Bar Association (see under the New York section):
Yes, the same name can be used by multiple businesses as long as the use does not create confusion in the marketplace. Whether confusion exists or could be created is analyzed by considering different factors such as existing use of the brand (or similar brands) by you and by others, any existing trademark registrations, and an analysis of how likely your use would create confusion in the marketplace, among some of the considerations.
Be mindful that clearing the use of a brand is not just about securing your rights as an owner of the brand but also to make sure you are not infringing on other users' rights which may come after you legally because of your infringing use.
Trademark review and then registration does require $ investment but the the good news is that such cost is relatively low considering the benefits and avoidance of risk.
Contact me directly
Roman R. Fichman, Esq.
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