If a similar company has a similar name as a trademark, am I still able to use it?

I have 2 situations with my company name; 1 is trademark and 1 is the

company name itself. I trying to name my company GIRAFFE but I found out that there’s a company with registered trademarks for GIRAFFEWORKS INC standard character mark and GIRAFFEWORKS a logo that has the same services as I do. Is the trademark close enough to my new company name to have any issues? Also, in my state there is a company named GIRAFFE INC, I’m trying to rename my company to GIRAFFE LLC. Will I have an issue in registering the new name? If so, will I have an issue registering a DBA company?

Asked on March 28, 2018 under Business Law, New York

Answers:

SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 2 years ago | Contributor

The main issue is not "inc." vs. "LLC" vs. "DBA": it's what do they and you do? To oversimplify what is a complex and nuanced topic, if you and they do similar things, you may be infringing on a trademark or potentially causing customer confusion, either of which could bar you from using the name. But if you and then do dissimilar things, you would be ok. Examples:
1) A company called "Joyful Soul" which provides dance and yoga classes was close enough to a pre-existing company called "Soul Studio," which does spinning classes, that Joyful Soul was only able to use its name by executing an agreement in which it committed itself to never offer spinning; if they had not, Soul Studio might have been able to win an infringement action against them (or least could have brought a credible action and forced Joyful Soul to spend money and time defending it). Even though the names were not identical, they were close enough that if they offered the same thing (spinning), it could have been problematic.
2) The "Coach" handbag company tried to sue Triumph Learning, a school book publisher, over the fact that Triumph called its test-preparation book line "Coach" books. That suit went nowhere and the Coach company lost in court because there is no confusion between leather handbags and school books: the products and customers are wholly separate.
So it depends on what you and they do, and how close your products and services are.


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