QUESTION

Can I localize a trade name?

Asked on May 20th, 2015 on Patents - Massachusetts
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I am going to open my own retail store and I want to use a name that has already been trademarked. I want to localize the trade name by adding our city to the beginning of it (eg Des Moines Sports Center). Will I avoid legal issues if I do this?
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3 ANSWERS

Intellectual Property Attorney serving South Jordan, UT at Pearson Butler
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Maybe. It depends on a lot of factors. You should consult privately with an attorney with experience in trademark law.
Answered on May 21st, 2015 at 5:40 AM

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Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
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It's probably not a good idea to use someone else's trademark in your trade name. For example, the Nike Sporting Goods Company isn't going to be happy if you open the Des Moines Nike Sporting Goods store. On the other hand, it can't do much if you call your restaurant "D.M. Nike Nachos" because it isn't in the food business and doesn't (last time I looked) own the mark for that class of goods and/or services. You also don't want to give the impression that you're a city department or agency or that there is city funding in your project. Check with an intellectual property attorney in your area for advice on the specific name you have in mind.
Answered on May 20th, 2015 at 2:19 PM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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MAYBE YES, MAYBE NO. The issue is one of likelihood of confusion as to sponsorship or affiliation between your store and the brand name already protected by trademark. If the public would think there was such association - then you would be violating the original trademark owner's rights - and they would likely ask you to change your store name. More importantly - if the original trademark is deemed "famous" by a court - you would not be likely to win an argument about confusion - if would be presumed as a matter of law. Why make lawyers rich? Chose a new name for your business - make it yours and make it popular with your customers. The you will be the one that some newcomer wants to copy... GOOD LUCK!
Answered on May 20th, 2015 at 2:06 PM

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