Would this be a trademark infringment?

[Guest PassionSunKiss]

I'm trying to come up with a business name for my bath & body products and down the road eventually trademark it. The the only concern I have is, when I looked up the name on the U.S Trademark website the same name is being used for a company that is down south in L.A that except they sell dried fruits and nuts. Is anyone familiar with trademark laws? Could I use the same name even though we sell completely different products? I have no idea what the guidelines are and the website is just so difficult to navigate .

[WillowBoo]

Not sure of the nitty gritty - but if someone already has a federal trademark - pick out a different name.

[Georgia]

Doesn't matter what they sell, if it looks like you are trying to capitalize on their hard-earned business name they could go after you. Definitely pick a different name. It's not worth it to fight or have to start all over building your business.

A lady that lived in Corning, NY (RIP Kimberly) owed Corning Wax Works. She ended up going head to head with Corning Glass Works who said she was trying to capitalize on their business name and reputation.

[KarenOH]

I agree...pick out a different name!!

There was a girl years ago that had a really good candle business. She had been doing candles for years and one day she got a "cease and desist" letter in the mail. The business name she had used for years we too close to the name of a big company. She fought it but lost...cost her a lot of money to change everything over to a new name.

I just found out last week that the business name I have used since 2002 has been trademarked in Canada within the last 4 yrs.

My business is small and the chances this company ever hear's of me is slim...but I went ahead and picked out a new name, re-did my logo, and have started re-doing all my brochures, labels, order forms, etc.!!

My point is...easier to change now than down the road!!

[classiccandle]

I spoke with my attorney when I was wanting to use Bean Candles for my candle line and she stated that because it was confusingly similar to Beanpod Candles and since we were both in the same industry that Beanpod could sue me for using it and recommended that I don't. She also stated that a name does not have to be trademarked to be protected. The issue of first use in commerce comes into play as well.

Having said that I do believe the industry in which you participate in has a bearing on the trademark. For instance, you can search Live results for the word Serendipity and it will come back with 47 records. Now, you would think only 1 result should come back but if you look at the registers you'll find that most are in different industries and most are different styles of the word.

Once you get into the realm of large commercial companies such as Nike, it probably wouldn't matter what industry you were in, you're probably going to get a C&D letter.

My advice to you is speak with an attorney that specializes in trademarks and patents before settling on a business name. They're far more qualified to answer your questions than anyone on this board.

[mdmd]

The test for infringement on a trademark is whether there could be a likelihood of confusion between two marks. And if it would ever go to court, the first to market could take precedence, even if it was trademarked by another company first (who never used the name, that is).

So you'd have to consider whether there could possibly be any confusion, and if you'd be willing to just give up that name and start over if the trademarked company ever approached you, or if you'd be willing to fight for it (and pay for lawyer, court fees).

[funkymonkey66]

I have a trademark so maybe I can help. I also have a trademark attorney that's fighting on my behalf because someone is currently infringing on my mark. The infringer already got a C&D but it looks like we're going to court so I'll share the valuable and expensive info.

In laymen terms

1. If someone has the name, pick something else. You did your due diligence running a search. Some people just see the domain name up for sale and think it's available or think their DBA is the end all. That is not the case, DBA’s are just a doing business as in your state, trademarks trump it.

2. Yes, Trademarks are not the end all, it's who used it first in commerce Trademarks just further helps your chances in court. In my case I was in business first and had a trademark way before she opened up shop. This person is just trying to cash in on my hard work.

3. It’s all about classes. Fruits and nuts are not the same as candle and wax melts. You can have "bean" produce but you can't have "bean" candles" because it's trademarked. You can't have the word "bean" period in your co. name because it's opens up the matter of product confusion. Also spelling it differently or trying to do a play on words doesn't fly either. You couldn't use been or beans and if you tried saying Dean Pod changing the B to a D would land you in court too.

Here is some Legal mumbo jumbo but it’s something to consider if you end up on the infringing end.

Trademark infringement and unfair competition under both state and federal law, including the Lanham Act, (15 U.S.C. §§ 1051-1127) grants remedies for such infringement which can include payment of actual and treble damages, recovery of profits, reimbursement of attorney’s fees, and also include injunctions against further use of the Infringing Trademark and the seizure and destruction of infringing materials. The Trademark Counterfeiting Act of 1984, 18 U.S.C.A. 2320 defines certain forms of trademark infringement as "trafficking in counterfeit goods", made punishable by up to 5 years imprisonment and a $250,000.00 fine.

Basically, the infringer ends up picking up the bill for everything when the Trademark holder wins in court, they’ll take everything. Put a lean on your house, plus the shirt off your back when they go looking for the money.

And whatever you do don't post on a public venue like facebook after you get served with papers that you are still using the trademark after you got the C&D and agreed to comply, but you are secretly using the trademark in your home state and the products are available fine salon and gift shops. Yes, the infringer is quite the dumb ass and thanks to her own public statements that I took a snap shot of and sent it off the attorney, she just buried herself even deeper.

Edited March 7, 2011 by funkymonkey66

[funkymonkey66]

I’m sorry, I just want on a bit of a rant for my situation and didn’t really answer your question entirely.

The first step is to run a trademark search through the data base, as long as nothing pops up in your class (candles and wax melts) then you can start the trademark process. You can do it on legal zoom if you wanted to save money. I recommend you upgrade to their data base search. Before they file they will give you a list of all the names that could interfere with you getting a trademark granted. Remember It’s a one shot deal, the government can deny you the mark and keep your money (close to $ 1,000 when all is said and done) so be sure to diligently research the name first.

Chances are if there nothing is showing up in the class you want then you should be fine. I would not wait on it, the sooner the better incase you ever end up in my type of situation. The more you have to protect your business the better especially if you have to go to court.

In some instances you may not even have to go to court to protect your name. In my case as far as some of the internet infringing that I found, that’s all it took was an email to the legal departments with an attached trademark certificate that got the products and accounts deleted off the servers literally with-in hours. I had 2 of the infringers facebook accounts deleted using my name and an Etsy account deleted just with an email. Apparently they take it very seriously.

[WillowBoo]

I've known attorneys to screw up more than I would like to remember. Just use your good common sense. Why would you want to use someone else's name? I'm proud of what I produce in my 3 businesses. I don't want to share that with anyone else.

[HorseScentS]

Thanks for the in-depth explanation. In my state, many are all using Heaven Scent, Heaven's Scent, Heavenly Scent or some variation, & I couldn't understand why they were able to do it.