Anyone experienced potential legal action against you for your business name due to trademark infringement?
My business has been open for 4 years & its legal name is a 1 word name that’s also used by a similar business of the same type in another state. However, our DBA includes the name of the town in which I do business. Due to the lawsuit, i have to be careful, so as an example, lets say my business is a coffee shop named “Java”. My DBA is “Java–a Jonesville Coffeehouse.” (NO, I’m not fighting Starbucks-thank god!)
Their DBA uses “Java” but their legal name does not. They DO have a US Trademark (“Service Mark”) for “Java Coffeehouse”.
Does anyone have any experience with business name trademark issues?
Any attorneys or people familiar with patents or Intellectual Property with advice?
My friend (an attorney) advised me to add my city name to my DBA years ago to add “locationality” to try to prove, if this ever came up, that no one could confuse the 2 companies since we clearly state our town.
P.S.There are also about 20 other businesses with the same name throughout the US.
Tagged with: Business Issues • Business Name • Intellectual Property • Starbucks
Filed under: Attorney FAQ
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Get an attorney. Don’t rely on anyone on Yahoo giving you advice for such a legal matter. Make sure that the attorney specializes in matters such as this.
My friends band was sued by a major corporation because the name was similar and the band was around LONGER!!
Big companies have very deep pockets so if you are in their radar you may be out of luck.
Contact a trademark attorney. You’ve got a specific legal situation that needs specific legal advice.
Determining if marks infringe can be tricky and each situation varies from another.
The general rules to keep in mind are:
1) Are the names similar in Sound, Appearance or Meaning?
2) Are the industries the same or similar to one another?
3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?
4) Do the trade areas cross? What about the advertising routes — are the products/services advertised in common places?
Here’s what the USPTO has to say about this matter:
“The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.”
It’s best to contact a private search company or a trademark attorney to assist you in determining if this will be a problem or not.
Hope that helps! I wish you much success & happiness in all your ventures!