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[krish04]

Hello,
I started a business in 2003 and registered a .com with my business name. Because my funds were limited at the time I never completed trademark process.  My wares included handmade items sold via craft shows, local stores and a military PX. I had business cards, all my products had business name on them, and I had an established tax ID number under my business name, BUT - I never used the "TM" symbol after it.
It's been a few years since my crafting days. I've still own domain name and I'm ready to use the name again in a new business venture. Yesterday I googled the name and discovered a band formed in 07' under same name as my business and has since trademarked the name (09'). Do I have any legal rights to the name? Since I own the domain, can I move forward and use it in a business that will have nothing to do with the music industry or am I left singing the blues???   

Your advice is greatly appreciated

[Isaac]

Since I own the domain, can I move forward and use it in a business that will have nothing to do with the music industry or am I left singing the blues??? 

You have some rights in the name, but your rights may not extend to stopping the band from using the name.  If the band's use of the name does not create confusion with your usage, it might even be that you don't have any real need to stop the band from using the name.

[JSonnabend]

It is also possible that the band is able to prevent your use of the mark (if you are deemed to have "abandoned" the mark).

- Jeff

[Zonath]

Well first off, if your new business is in a field that would be completely different from that of the rock band, it's unlikely that there would be enough likelihood of confusion for the rock band to be able to stop you from using the name, or recovering on an infringement claim.  If the band is famous enough, they may be able to claim that their mark should be considered a 'famous mark' and be accorded protection from dilution under 15 USC § 1125(c).  Of course, this seems unlikely for a band that's only been around for three or four years, but I throw it out there just for the sake of completeness.

Secondly, since it sounds like you've stopped using the name in commerce, it's possible that you may have abandoned whatever rights you may have had in the name stemming from your prior use.  Additionally, even if you have some residual rights through your prior use, they may not extend to an expansion into an entirely new line of business, especially where that new business causes a likelihood of confusion with a registered mark.  For example, McDonnell Douglass (the aircraft company) would presumably be infringing upon the trademark of McDonald's if they were to start selling hamburgers under a name which included "McDonnell;" this despite the fact that the aircraft company was established a year before the hamburger place.

Finally, for any name you intend to use in business, you should have a search conducted in order to assess your potential liability for infringement upon the marks of others, and you should seek the advice of a professional in your area to advise you regarding the use of a potentially-infringing mark.