Trademarks

January 20, 2005 12:05 PM

Can someone explain to me how trademarking works? I am starting a company with some friends and we are trying to come up with a name. When we look up a name to see if it is trademarked at the U.S. Patent and Trademark Office site, we see numerous trademarks for the same name. How can this be? Can a name be trademarked by more than one company?
posted by mudhouse to law & government (23 comments total)

In short, yes.

I have in my possession the complete Trademark Search for my company's identity. In it there are more than 200 similar names, some nearly exact. If there is little to no chance of confusion on the part of the consumer, it is often allowed.

For instance... FatCow Web Hosting isn't likely to be confused with Fat Cow Ice Cream. You see?
posted by FlamingBore at 12:10 PM on January 20, 2005

Yeah. Generally, your trademark is only good for a particular category of goods/services. I'm sure others will chime in with more details, but if you are serious about trademarking your company's name, you should talk to a lawyer. He'll probably even tell you the general law for free.
posted by EatenByAGrue at 12:11 PM on January 20, 2005

One famous example. Apple Records and Apple Computers (although there was still some litigation regarding that).
posted by EatenByAGrue at 12:12 PM on January 20, 2005

Oh, one last thing. I think you can get a trademark for a specific geographical region as well (though I think if you register it with the Feds, it's presumptively nationwide).
posted by EatenByAGrue at 12:22 PM on January 20, 2005

Another example: United Van Lines and United Airlines both have a trademark in "United," but for different services.

Google has a trademark for "I'm Feeling Lucky." That would allow them to prevent another search engine from using that phrase, but not a gambler at the craps table.
posted by profwhat at 12:23 PM on January 20, 2005

"Oh, one last thing. I think you can get a trademark for a specific geographical region as well (though I think if you register it with the Feds, it's presumptively nationwide)."

Not quite. TM is federal; there's no such thing as non-national trademarking. But if your product is intrinsically local, you may be just fine with common law local rights.
posted by ParisParamus at 1:01 PM on January 20, 2005

Here is some info you might want to read:

USPTO TM FAQ

Nolo's Trademark Law Primer

Cyberlaw at Harvard's Trademark Law Overview
posted by caddis at 1:04 PM on January 20, 2005

mudhouse, contact me via email if you would like a detailed answer to your question.
posted by anathema at 1:06 PM on January 20, 2005

State common-law trademark was what I was referring to with the first part of my last comment (like Burger King), ParisParamus, but thanks for the clarification.
posted by EatenByAGrue at 1:09 PM on January 20, 2005

In the TM report I have, there are three sections: Federal, State and Common Law. For what it's worth.
posted by FlamingBore at 1:15 PM on January 20, 2005

Frankly, I'm running on Intellectual Property fumes, my knowledge pretty well limited to a few courses in law school. But I can offer this: J&R Appliance in Park Slope, Brooklyn, was using the name for years; then J&R Music-Computer-Appliance empire near Ground Zero trademarked the name; both stores coexist.

I bought my vacuume cleaner at the little J&R.
posted by ParisParamus at 1:21 PM on January 20, 2005

As to geography: Trademark rights arise out of use of the mark. Where was the mark used, for what and when did it start? Federal registration is the equivalent of using it everywhere in the US. So, a little mom and pop shop using the name Starbucks to sell coffee in Hicksville starting in say 1950 would establish rights for as far as they were generally known, probably no more than 20 to 50 miles. Along comes Starbucks out of Seattle in 1971 who gets big and registers with the USPTO. Mom and pop were first and have priority, but only in Hicksville. Seattle Starbucks can probably still get their registration because mom and pop's use is so small, but near Hicksville mom and pop rule. Now that Seattle Starbucks has a registered mark mom and pop are stuck in Hicksville and can not open a chain of shops across the US. (this story is complete fiction by the way)
posted by caddis at 1:49 PM on January 20, 2005

Even what constitutes the same industry, and who has been in that business longest, can get tricky. See, for instance, Amazon v. Amazon.
posted by nakedcodemonkey at 1:53 PM on January 20, 2005

As an aside, when something is trademarked, the trademarked name (of the item) in question is an adjective, not a noun--when you go about trademarking something, you'll need to be aware of this. One famous case involves the Otis company and their moving staircase--as I remember, the word "Escalator" made its way into the common vernacular and when other companies began using the word, Otis didn't have a legal claim to it because Otis had been sloppy in their trademarking nomenclature.

No:
Kleenex(TM)
Band-Aid(TM)
Frisbee(TM)

Yes:
Kleenex(TM) Facial Tissue
Band-Aid(TM) Adhesive Strip
Frisbee(TM) Flying Disc
posted by fandango_matt at 2:04 PM on January 20, 2005

IP, unfair trade, and antitrust were the only courses I liked in law school.
posted by ParisParamus at 2:05 PM on January 20, 2005

What fandango_matt is referring to is called trademark dilution, and recent news about TiVo illustrates an interesting (if futile) case of trying to counteract such linguistic drift.
posted by matildaben at 2:34 PM on January 20, 2005

(Having grown up in the Twin Cities with a mother who actually regularly went to the Amazon Bookstore, Amazon.com confused the hell out of me as well when they first opened...)
posted by neckro23 at 2:41 PM on January 20, 2005

The thing about the Amazon v. Amazon.com thing that will be troublesome is that Amazon Bookstore did not defend their trademark when they became aware of a potentially infringing company. That could play into any success they have in court.
posted by FlamingBore at 3:25 PM on January 20, 2005

There are a number of reasons this could be, depending on the mark.

Do a structured search, not a simple search. You only want Live marks. ("live"[ld]). Once a mark is abandoned, it's not a conflict.

As everyone else has said, you only want the relevant international or business class, depending on where you'll do business. The same name can be used inside a business class as long as it isn't for a product or service that could be confused. However, if a very large (with lawyers) company has the TM, they can argue confusion pretty widely.

Plus, there are a number of words and terms you simply can't trademark. Very common last names, industry standard terms or terms that were in common generic use, etc.

Even if a mark is clear on the USPTO database, that doesn't mean it's clear on a common law basis, or even with the "intent to files" piling up at USPTO.
posted by Gucky at 4:06 PM on January 20, 2005

Here's a interesting trademark battle from a couple of years ago in my neck of the woods. Also contains links to some basic info on trademarks.
posted by Aquaman at 4:47 PM on January 20, 2005

One famous example. Apple Records and Apple Computers (although there was still some litigation regarding that).

There was litigation regarding that because Apple Computers went into the music business. The first suit was over the Apple IIgs, the company's first truly music-capable machine.
posted by kindall at 4:57 PM on January 20, 2005

kindall, I was referring to the initial litigation that led to the agreement that Apple Computer would not enter the music business, not the subsequent conflicts over whether they had violated that (and subsequent) agreements you mentioned.
posted by EatenByAGrue at 7:24 PM on January 20, 2005

As everyone else has said, you only want the relevant international or business class, depending on where you'll do business.

No offense, but this information is incorrect. Likelihood of confusion can, and often does, span between classes.

Also, please don't confuse "registration" with "trademark." They are two quite distinct concepts.
posted by anathema at 8:06 PM on January 20, 2005