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[Dezinr]

My husband and I have a corporation and are interested in starting another.  Our only problem is the name of a product we want under this corp.  We paid for a Comprehensive U.S. Trademark Search Report.  What we found is that there is a company/business with a name that is similar.  The only difference in the name is one letter spelled differently.  Instead of a "S" we used a "Z".  We would really like to use this name as a brand product.  The products are the same, both are skateboards brands.  This other company was trademarked in 1988.  Should we be concered about lawsuits???  The name would be spelled different.  Thanks!!!    

[Angela Glattli]

I wanted to correct myself.  This is a registered business (R), not a trademarked brand name.  If we are to use the name (spelled different) for a brand product and trademarked it, would the laws be different from a registered business name???  Thanks!!!  

[Dezinr]

Sorry, I forgot to sign in.  Well, you all know my name now!  This site is new to me.  I thought I was still signed in from last night.  Once again...sorry!!!  

[CriterionD]

Well, the fact you guys would be using an "S" instead of a "Z" would not be likely to matter as far as trademark issues are concerned.  I am assuming the two names are very similar phonetically.

Is the other company's name registered with the USPTO?  Even if it is not, its important to know that the name of a business can also be a brand name subject to trademark rights.   If the name is currently being used in commerce "as a trademark" by this other company, then it is subject to trademark protection.  If it is not currently being used in commerce "as a trademark" but has been recently enough, it still may be subject to trademark protection.

Its also possible that the other company may be using the name in commerce but not "as a trademark."  Even in this scenario,  this doesn't necessarily prevent the possibility of a lawsuit.

[JSonnabend]

If the senior user of the name is using the name in connection with the product, then in all likelihood, it's using it as a trademark, and you'll be hard pressed to argue your case.  

I'm not sure how an entity can use a name "in commerce" but not "as a trademark".  It may be possible, but no scenarios are coming to mind.

- Jeff

[torgo]

Unfortunately, you are confusing a few issues.

We'd have to know if your product has the same name as one registered as a trademark with the USPTO.  We'd have to know if your product is in the same glass of goods as the name that you found.

Finally, we'd have to ask if the "S" or the "Z" makes a difference in sight and sound.  To be honest, if your product is similar enough to be in the same class as the original product and the names sound the same, you will have a difficult time prosecuting your trademark application.  

[Isaac]

Some of the PTO classes cover widely dissimilar goods and services.  I'm not sure an analysis based on goods or services being in the same class is going to be all that accurate.

[torgo]

And you're correct.

I should have been more precise - it's still an analysis of the goods/services, just not necessarily according to the international class system.

Some of the PTO classes cover widely dissimilar goods and services.  I'm not sure an analysis based on goods or services being in the same class is going to be all that accurate.

[Dezinr]

Hey there!

The new corporation we have started is for our skateboard & clothing distribution company.  We are going to brand several skateboard lines and clothing lines.  We choose a name we thought sounded really "GREAT" for one of our lines.  We paid for a search through Legal Zoom ® and have gotten our search back last month.  Found out that there is a registered business name under this search.  There isn't a brand name product under this business name that I know of; however this is a registered business name.  The name is spelled differently.  The name means the same thing, sounds the same, but ours would be spelled with a "Z" instead of an "S".  This is a company/shop that sells skateboards, etc.  This brand name we would use would be a line of skateboards & clothing.  We would like to register/trademark this name if at all possible.  My husband tried to contact the company which is located in Southern California, but no number was given in the search results we received.  We tried to do a search for this company on the internet as well.  Nothing came up on the internet.  I'm sure we could call directory assistance and give them their address to get their number.  My husband wanted to ask if they have trademarked their name of their business as a branding product.  I don't know it this would work against us or not.  This is a small skateboard shop in California.  We would love to still be able to use this name for our skateboard & clothing line.  I'm just a little lost.  I'm not sure if we should continue pursuing it or just drop it all together.  I could use some advice!  Thanks!!!  

[JSonnabend]

You really need to discuss your matter with an attorney directly.  The free advice you may receive here is worth exactly what you pay for it.  It's unfortunate that you went with an outfit like LegalZoom instead of with a qualified attorney from the outset, but, alas, that's where you're at right now.

Out of curiosity, what did you pay for your search, and what did it cover?

- Jeff

[torgo]

I agree with Jeff.  Pick up the phone and call one of us.  That's the best way to come to a solution for your problem.

-Anthony