QUESTION

Can I file for a federal trademark on my company name if there is another company with the same name in another state that is not federally trademark

Asked on Aug 09th, 2011 on Intellectual Property - Hawaii
More details to this question:
I want to file a federal trademark for my company name. There is a company going by the same name that has a state trademark on their name in a different state, but they do not hold a federal trademark for their name. Is it possible to get a fed trademark on my name? Or am I SOL due to the fact that there is the same name trademarked on a state level?
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1 ANSWER

Business Law Attorney serving Cincinnati, OH at Cors & Bassett, LLC
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You are entitled to use your company name in the geographical area in which you do business, but you are not entitled to register your company name as a federal trademark to obtain exclusive rights to use the company name in the whole United States unless you use the trademark in interstate commerce.  Furthermore, if you know that someone else is using the same name for substantially the same goods and services, you cannot register the trademark in the US Trademark Office because that would cause confusion and the public would think the two companies are related.  If the other company sells very different goods or services and there is no likelihood of confusion between your use of the company name and their use of the same company name, then you may be able to register your company name in the U.S. Trademark Office, but you could not prevent the other company from using the same name on their different goods or services.  An example of using the same name for different goods or services is Delta Airlines and Delta faucets.  Another requirement for registering a trademark is that the mark has to be distinctive, it cannot be descriptive.  For example, you could not register a trademark BEST WHOLESALE PLUMBING SUPPLIES because the trademark simply tells what you are selling, and the word "best" is not distinctive.  You would not be allowed to obtain exclusive rights in a trademark that simply describes your goods or services. This answer is intended to educate you about trademarks and does not constitute legal advice specific to your situation.  No attorney-client relationship is created by this answer.  You should consult an attorney who practices trademark law to obtain legal advice about your set of facts.
Answered on Aug 10th, 2011 at 4:34 PM

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