Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[zzz]

I have done some research on this, and for some reason I can't answer a very basic question. I apologize for the ignorance!

I am starting a clothing/apparel brand that will initially be an online store. (I will be doing the design and getting apparel printed)
Anyway, the name I want to use is trademarked by a few other companies that have nothing to do with selling clothing. (Per a TESS search by myself)
My question (which I think I probably already know the answer too), is:Can I get a trademark on my name even if there are other trademarks for that name but for other industries other than a clothing brand?

Once again...I know this is very basic, I'd just like a better explanation.
I appreciate any input!

[BobRoberts]

"Can I get a trademark on my name even if there are other trademarks for that name but for other industries other than a clothing brand?"

You are free to use a name/mark to identify your goods/services in commerce, so long as your name/mark is not confusingly similar to another name/mark already being used in commerce.  There are several factors used when determining whether one mark is confusingly similar to another mark.  A search on "Lilkelihood of confusion" will help you understand that better. 

A person/company could still create trademark rights in a name/mark, even if it is not registered with the Patent and Trademark Office.  Usually, Registeration with the US PAt. and TM office gives stronger rights. 

TESS just covers registered, pending, Intent-to-use, and abandoned or otherwise dead marks.  If someone is using a mark but didn't go through the steps to register (or try to register) it, it could pose a problem.  Further, just because you don't see your exact mark in TESS doesn't mean your mark isn't confusingly similar to another already being used in commerce (see likelihood of confusion).  And, even if not the same field, if your mark was already being used in a related (but different) company, you could have a problem.  If I attempted to start a company to sell "United" brand Luggage, I would probably hear from "United Airlines" to stop selling my luggage as my purchasers may think that my luggage is related or associated with United Airlines. 

Good luck.   

[zzz]

I know everyone is in the same boat starting out...but it's just frustrating that you basically have to spend $350-600 with no idea whether a trademark will be rejected or not.

How do you create trademark rights if you're not registered? Doesn't seem like that should hold up to someone actually trying to trademark...

[BSZ]

I know everyone is in the same boat starting out...but it's just frustrating that you basically have to spend $350-600 with no idea whether a trademark will be rejected or not.

How do you create trademark rights if you're not registered? Doesn't seem like that should hold up to someone actually trying to trademark...

OK, let us put in this way. everything has a risk, even life itself, there is no absolute guarantee, agree? Assuming that you spent thousands more dollars to start your business, could you asssure that it will be a big success? the answner is obvious, the same as applying a trademark, there is benefit while there is risk too.
good luck with your business

[Yak]

How do you create trademark rights if you're not registered? Doesn't seem like that should hold up to someone actually trying to trademark...

As BobRoberts touched on earlier, trademark rights are established through use in the marketplace not through registration.  Say I sell boots that I designed and made in a store and online and sell them under the brand name "Kemosabe."  Once I begin to advertise and sell my boots under this brand name to identify the source of the boots, I have begun to established trademark rights in the name.  Once I have sales across state lines, I can then register the mark with the USPTO, but I do not have to. 

[RaphaelStewartLaw]

Often if you select a brand name without conducting a throughout research on the availability of the brand name, it leads to costly consequences. It does not matter if a trademark you intend to use is registered with USPTO or not, what matters is who first used this particular trademark. In my article I have described 10 important things to consider when you select and protect a brand name. The title of the article is A Legal Perspective: 10 THINGS TO CONSIDER WHEN SELECTING AND PROTECTING A BRAND NAME. You can find it at raphaelstewart.com in the blog section.

[Doc]

We were successful in obtaining a trademark for a name that's very prominent, though we had a variation of the spelling of it.

We were in a totally different class of services when we applied.

Yet the big enterprise challenged our application to the PTO based on "likelihood of confusion"  .

After 8 months, the PTO found that since we were in a totally different class that there was no problem and thus, they registered our trademark application.

And let me tell you, it's a WELL KNOWN name too.