QUESTION

Will I be able to register and trademark this business name?

Asked on Feb 27th, 2012 on Intellectual Property - Texas
More details to this question:
I am looking to start a software/web hosting business under the name "Sample Name". I have found that "Sample Name" is trademarked by another company in a separate state in regards to "computer hardware and peripherals". Specifically, they have a physical product (an external hard drive unit) that is called "Sample Name". Would using "Sample Name" as my business name conflict with the existing trademark? Secondly, would I be able to trademark "Sample Name" for use in regards to digital software/digital services? My digital software product would be very different from their physical hardware product, but they do both do have the "computer industry" in common I guess. Appreciate the help greatly.
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2 ANSWERS

There are a lot of other facts that you would have to know to answer your question. Trademark rights are acquired through use in connection with the offering and sale of goods/services so that consumers can identify and distinguish the source of those goods/services from other providers of similar goods/services. A user of a trademark has common law rights by virtue of using the trademark, and those common law rights are limited to the geographic area in which the mark is used. It can be very difficult to determine where that geographic area lies. Federal registration gives a trademark user presumptively nationwide rights. Under your facts, it is not clear whether the other company has a Federal registration or where the other company's common law rights exist. It is also not clear whether another person has registered or is using a trademark that is similar to your trademark. A business name does not necessarily establish trademark rights, so it is also not clear whether you are referring to a "trade name" or a trademark. One final point, goods/services do not have to be identical to be infringing, they only have to be related or in the natural zone of expansion of the senior (prior) user of that trademark. You should talk to an experienced trademark lawyer to decide if it is worth investing in this trademark if there is a possibility that you would have to stop using it in the future.
Answered on Mar 04th, 2012 at 12:08 PM

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Litigation Attorney serving Greenwich, CT
Partner at Hilary B. Miller
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The answers to your questions are "maybe." Trademark questions are always enormously fact-intensive, and the answer to these questions will likely depend on the "strength" of the senior user's mark. It is impossible to tell from the facts you put forth whether their mark is, for example, "famous" and thus easily infringed. You will need to consult with a trademark attorney to look into this further. Please feel free to call our office for a consultation.
Answered on Feb 27th, 2012 at 9:46 PM

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