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Old 18 September 2018, 11:33
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Le3 Le3 is offline
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Starting Business - Trademark Question

I am planning on finally venturing into starting my own business. A search on the TESS system of the Patent and Trademark Office revealed that another company has registered the name as a trademark for one of their products. The more I research, the more unclear some points have become to me and any pointers in regards to even pursuing using the name for my company would be very appreciated.

To my understanding I should be in the clear using the name, as long as I am not operating in the same category, correct? The name is not a unique "made up" name or combination of words, such as "Google" or "Facebook", but rather a term that is associated with several things. Below a fictional example (I am willing to share the details via PM):

Company X registered a TM for one of their products, a backpack called "Albuquerque". I am planning on naming an apparel company "Albuquerque".

Any pointers would be highly appreciated. Thank you.
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Old 18 September 2018, 14:12
doitforjonny doitforjonny is offline
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Don't even worry about it til you have 10-20k in actual sales from complete strangers.

Don't put any attention or effort towards it until you have 50-100k in sales, again from complete strangers.

If you have over 100k in sales and have not been contacted by someone telling you to stop, then start talking to a patent lawyer and expect to pay 5-10k to tell you what to do.

Trying to figure this out on the front end is a waste of time until you have the bones of the business functioning, and then if you need to make a change to a logo or a website, well that is just a t-shirt change.

Make sure you have a t-shirt first before you decide what logo you want to put on it.

Treat everything up to the first 100-200k of sales as proofing your concept, and then you can formalize everything after.

Focus on extremely clean accounting and costing on the front end, and understand exactly where your business is coming from, how the money you spend on marketing directly translates to sales, and how much time you split between building or working the product or service and doing sales/marketing/customer service.

Once you get those patterns down and are comfortable measuring them, then you have a business that it makes sense to brand formally.

That infrastructure will be your business, the brand will be your delivery vehicle and can change.
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Old 18 September 2018, 16:30
KillRoy KillRoy is offline
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Originally Posted by Le3 View Post
A search on the TESS system of the Patent and Trademark Office revealed that another company has registered the name as a trademark for one of their products.

To my understanding I should be in the clear using the name,
The short answer is it depends. The legal standard for trademark infringement is likelihood of confusion in the mind of a consumer.

Generally speaking, the more specialized the goods, the less the likelihood of confusion (i.e. jet aircraft components v. consumer products at Walmart). The rationale is that a consumer of specialized goods is more clear on what they want and not prone to impulse purchases.

If you and the other party are dealing with apparel-type goods, that is more on the non-specialized side of things. I would be careful.

Other things to consider:

- the tm owner has an incentive to come after you once they are aware of your use of the mark. A tm owner is obligated to enforce their mark against infringement otherwise, such inaction will be interpreted as acquiescence to the use. This will weaken their mark. Coming after a small guy typically involves sending a cease and desist letter from an attorney which causes the small guy to stop the use just to avoid the hassle and expense.

- it is to your advantage to file to register a trademark, even before you use it. The real benefit is that it allows you to eventually register and protect any domain name using the mark (provided no one else already had it). This can be very valuable to small and start up companies.

- you have already touched on this to a certain degree, but it bears emphasizing. Select a mark that is completely abstract and not related to the goods or services. Great examples are Nike, Google, Apple, Yahoo!. None of these have any relationship to the underlying products. They also make for the strongest trademarks.
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Old 18 September 2018, 17:01
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Thank you both, this is great information. I potentially have a couple of points for further discussion which I Willa address after work.
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Old 19 September 2018, 07:32
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B 2/75 B 2/75 is offline
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Went to the trouble to get both the name SurvivIt and the logo both trademarked. Total expense was something north of $500. Wasn't either necessary or worth it, as it turned out. Which reminds me that both will be coming up for renewal sometime soon. Interested parties wishing to acquire said items may inquire within


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Old 19 September 2018, 07:59
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My business name, which I totally thought up myself before even looking at anything, happened to also be a heating product out of Sweden - never heard a peep in going on 11 years (and I have a Hyphen in there )

Like above, I would look at how close the businesses are and how much money you think another company would throw at enforcing a TM.

One nightmare company was Monster Cable - they would go after any company with the name 'Monster' in it, no matter what they made - they went after the job site, the MLB for Monster Stadium, a mom and pop computer shop, etc...
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Old 21 September 2018, 15:24
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X-rgr X-rgr is offline
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I've done this a little. Here are some things I learned that might not be obvious. They weren't to me:
1. There are state trademarks, and national trademarks (and each country has a trademark process). I've registered a national trademark only to find that there was a state trademark in use for a similar item. That's a mess. This was before the internet-- so I assume it's easier now.
2. There are maintenance fees.
3. Common words, or combinations of common words (ie: "Guardian") can't be made "unavailable" to other companies with other products, but the actual appearance of the logo can be trademarked. Particular images that are NOT words can be trademarked (for instance, the wavy line around a Crayola crayon, or the tan-over-green chevron on the Crayola box are both trademarks). It seems to me that shape/attributes of the wasp-bodied Coca Cola bottle from our childhood was also a trademark.
4. Trademarks and patents are really only a license to sue. If you're not willing to defend the mark (or patent, for that matter), don't waste your time or money getting one. What you THINK you're buying is a brand identity, what you're actually buying is a responsibility to seek out and sue companies who infringe.
5. Don't ever agree to letting anyone use any part of any trademark in any distribution or licensing arrangement... especially the kind that's not written, or well-written. Later, they'll simply claim it was REALLY their mark (no docs necessary), sue YOU for infringing your own mark, and the judge will split the baby and give you both half just so he doesn't have to make a real decision. I can think of 3 different distributors that have pulled this with companies I have worked for, so this is a lesson well-learned about an apparently common tactic.
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