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[FARRAGO]

Hi, I've been busy working on a business concept -- designed the product, constructed a prototype, got my ducks in a row and cranked out a business plan.  Step one was to trademark the name and then lock down a url.   In the 11th hour I discover a company online -- let's call them XYZ Corp --  that has a product that would be considered to be in the same family, but not specifically what mine is.   It would be like saying someone developed a hat and someone else developed socks -- both are clothing, but they are each for a different part of the anatomy.   I don't plan to patent my product -- it's unique, but I don't believe rises to the level of being patentable.   But that's not my question.   

My question pertains to trademarks.   XYZ Corp has a product that they are marketing online with a name that reads like this:   ABC Product(R) _________ TM --  with the ______ TM being the name that I was planning to apply for trademark registration on.   Now, XYZ Corp does not use the words _______ TM either on the product or on their packaging.   And, they have not as of today filed a trademark application, they are simply claiming usage by using the TM.   

So...  should I decide to go forward with the conflicting name -- which by the way would be my primary brand name not a subnote as XYZ Corp is using it -- would I be open to action by XYZ Corp and/or could I request XYZ Corp to cease using the name?   Any idea where I would come out on this conflict?

Curious to hear your thoughts.

Thanks in advance for taking time to reply.

[Kaitlin]

It sounds like you're putting good thought into this.

The two main concerns seem to be whether or not the goods truly compete and whether or not the other company is actually making a "trademark" use of the name. 

In thinking about trademarks, it helps to keep in mind their function: to help consumers distinguish among goods/services in the market place so they can rely on reasonably consistent quality from a given brand. 

The hallmark of infringement is "likelihood of confusion", which is determined by the similarity of the marks (how they sound and look) and the similarity of the goods (including where they're likely to be sold and to what sorts of consumers).  If the marks in question are identical then you mainly focus on the goods.  How likely are people to think a certain name brand on X means the X's come from the same source as the company that puts that brand on Y?  Delta faucets and Delta Airlines?  they can co-exist without confusion.  Joseph Banks socks and Joseph Banks hats? probably not.  (I say "mainly" focus on the goods because the "strength" or distinctiveness of the mark at issue can play a role.)

So depending on how distinctive your mark is and how analogous your example is to the actual situation (and you're wise not to use the real facts in a public forum), there could well be a conflict. 

Regarding the other company's rights, as you've noted they've put the world on notice of their claim to trademark rights by using the "TM."  So you know they won't take kindly to any sort of competitor using the purported mark, and that notice helps them show willful infringement if they have the rights they claim.  In the US, trademark rights come from use of the mark; registration only enhances those rights.  If they are using the mark in connection with sales of the product, I believe that can be sufficient without their actually applying the mark to the product or packaging.  (Active practitioners, correct me if I'm wrong here.)  So, depending on the mark (e.g. the generic term for a product can never be a mark for it) they could have enforceable rights. 


The analysis of trademark conflict involves a mixed bag of competing influences and is best left to someone with experience in how courts have been parsing similar situations.  If you have the resources to do so, it would be money well spent to hire a trademark attorney to check on the viability of not just this, but any other mark you might consider prior to use or attempt at registration.  (And expect the results of the analysis to be in terms of how likely the mark is to be clear of problems, there are never any guarantees, only strong probabilities.)  If that's out of the budget then it may be best to err on the side of caution and follow the maxim "when in doubt, don't." 

[FARRAGO]

Thanks for the thoughtful reply Kaitlin.    I'm definitely going to consult a trademark attorney before proceeding any further.

Do you (or anyone else) happen to know...   should I request the attorney to sign a Non Disclosure Agreement, or is the attorney already governed by professional standards to guard my information? 

[Kaitlin]

Attorneys are required to keep the confidences and secrets of clients.  But there should be no need to disclose trade-secret details in consulting about your trademark.  A general description of the product and its expected market (types of consumers, channels of trade, etc.) should suffice.  A good IP attorney would also be able to advise you on how best to maintain a trade-secret if you choose to ask for advice in that area.

[FARRAGO]

That makes sense.   Thank you again Kaitlin.

[Kaitlin]

You're welcome.  Good luck.

[JSonnabend]

To add to what Kaitlin has said, you're starting from a common misconception.  You said "Step one was to trademark the name".  There's no such thing.  One does not "trademark" something.  One may register a trademark, but the trademark itself (i.e., the trademark rights) are created through use and only through use.

- Jeff