More details to this question:
I have a company who develops a mobile app. We gave the app a name ('xyz - xyz abc qrs'). The name as above, is how it appears in the app store. On the app store there is another app made by a different company named 'xyz' This company registered a trademark on the name 'xyz' in the USA. The company claims that their trade mark registration gives them exclusivity to the 'xyz' trade mark in respect of the goods set out in the registration. Specifically includes computer application software used for similar purpose which our app does. They are asking us to change our app name accordingly and not use the name 'xyz' at all. To be clear, our app has different branding, colors, logos etc. and nothing that is similar to the other company's app and therefore there is no confusion between the 2 apps. The question: is their claim reasonable and there is a case for trademark infringement? can someone clarify the law here? My take is that for example: apple has many trademarks such
1 ANSWER
The short answer is, change the name of your app. The standard for trademark infringement is confusing similarity. If the marks are identical (which you say is the case, both being XYZ) and if your goods are the same type as theirs and as is recited in their trademark registration, i.e., computer software, then your usage is confusingly similar and you are infringing their trademark. Put another way, someone going to an app store and seeing two apps with the same name has a reasonable basis to assume that they are being produced by the same company despite any differences in coloration, type font, etc.
Answered on Feb 24th, 2014 at 4:35 PM