Introduction
If you are thinking of using another party’s name or trademark in your business name, there are a few things you should know. First, it is possible to use another business name or trademark in your own business name or mark. However, just because it is possible does not mean that it will be easy! There are certain legal limitations on using another’s mark that revolves around the USPTO Trademark Application process.
It is possible to use a business name or trademark that contains another business name or trademark. However, there are limits to how you can use the existing business name or trademark.
To avoid infringing on another business name or trademark, don’t:
- Use the other’s mark as a part of your own mark (for example, combining “Coke” with “Soft Drinks” would be prohibited).
- Use an identical spelling of their mark (for example, using ‘Coke’ instead of ‘Coca-Cola’ could get you into trouble).
- Make it appear as though you’re sponsored by them (for example, using only their logo with your company’s name).
Use the mark in a way that could confuse consumers about which company is selling what. The best way to avoid infringing on another business name or trademark is to conduct extensive research before registering your own mark with the United States Patent and Trademark Office (USPTO). This can help you avoid any potential legal issues down the road.
You must make sure that your mark is not too similar to other marks on the Supplemental Register.
Your proposed mark may be rejected if it is confusingly similar to a registered mark or an existing unregistered mark. In general, the USPTO compares the marks visually by looking at them side-by-side.
The USPTO has a guide for determining whether a mark is too similar to another mark, available at http://www.uspto.gov/trademarks/searching/similarity_search/.
The USPTO will also look at the goods or services on which your mark is used to determine whether there is a likelihood of confusion between the marks. If there is, your proposed mark may be rejected by the USPTO.
If your mark is considered descriptive, it does not need to be registered, but it will not receive any of the legal benefits associated with federal registration.
Descriptive marks are not eligible for federal trademark registration, but they may be eligible for state registration and common law protection.
Descriptive marks are considered to be the most commonly used type of trademark. They describe a characteristic or feature of your products or services that consumers would use in describing them to others. Examples include: “The Best” motor oil; “Large” restaurant chain; and “Great” computer store.
If your mark is considered descriptive, it does not need to be registered because it will receive all the legal benefits associated with federal registration (such as nationwide priority). However, descriptive marks are not protected by law against others using similar marks on similar products or services so long as those other users do not cause confusion among consumers about who owns the rights in their mark(s).
You do not need to use a symbol like (R) or ™ with your mark if it is not federally registered.
The symbol (R) is used to indicate that a mark has been registered with the United States Patent and Trademark Office. The ™ symbol indicates that a trademark is used in commerce, but it is not registered with uspto.
If you are using your business name as a trademark, then you do not need to use either of these symbols because they will confuse readers into thinking your mark is federally registered.
If your mark is too similar to another mark, the USPTO will reject your application. You will be able to respond with evidence that your marks are not confusingly similar, if you wish.
Generally, you may use another’s trademark to describe your goods or services so long as the use is truthful and does not indicate an association with the trademark owner. For example, in a car magazine article you might write that “Ford sells pickup trucks, Ford makes SUVs and Ford sports cars.” However, you could not make a shirt that said “I’m a Ford” if the context would suggest that Ford Motor Company sponsored or authorized the shirt.
If you are not using your business name as a trademark. Then the ™ symbol may be used in conjunction. With the name to indicate that it is being used as a trademark. You can also use ® if the mark has been registered with uspto, but this is not required.
If you are using your business name as a trademark and it has not yet been registered. With uspto then the ™ symbol should be used in conjunction. With the name to indicate that it is being used as a trademark. You can also use ® if the mark has been registered with uspto, but this is not required.
Conclusion
If you are planning on using another business’s name or trademark in your own, it’s important to do your research regarding US Trademark Filing. This way, you can avoid any potential legal issues and be sure that. Your use of the mark will not create confusion among consumers.
