Can I continue to use a business name that is not trademarked when a company in Canada has a registared trademark for a product under a similar name?

Am I at risk for trademark infringement? A Canadian company has a live registered mark for a product they have under a similar name. I submitted an application for registration with the uspto but it was rejected due to likelihood for confusion. Can I still use my name in commerce or is it better to re-name the business and file an amendment to my articles for inc.?

Asked on August 29, 2011 Pennsylvania

Answers:

FreeAdvice Contributing Attorney / FreeAdvice Contributing Attorney

Answered 9 years ago | Contributor

If your trade name was rejected in your application due to it being confusingly similar to a registered name that is similar to that owned by a Canadian company, your use of the name in commerce is at risk to the ownership rights of the Canadian company where you have already been placed on notice of the likelihood of confusion of the two names by consumers.

From a business standpoint, why would you want to invest the time and money in the name of your business knowing that there is another company that most likely has greater ownership rights than you have as to the name?

I suggest you find another name for your business that is not confusingly similar to that of any other business. Trademark/service mark lawsuits are expensive to defend and are time consuming.

I would amend the name of your business with an amended filing with your state's secretary of state.


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