Can one continue to use for their company name a term that is currently trademarked by another party if it is not causing loss of sales or goodwill?

If one is using a name for their company that has already been trademarked by another party, are there any reasons other than the loss of sales and the loss of goodwill by the mark’s owner that would constitute the use of that name as being infringement? If it is shown that the name is not being “confusingly similar” or causing a loss of sales or goodwill, should there be any reason one couldn’t continue to use the already trademarked term?

Asked on September 4, 2011 under Business Law, Minnesota

Answers:

MD, Member, California Bar / FreeAdvice Contributing Attorney

Answered 9 years ago | Contributor

The simple answer is no. The whole point of trademark, copyright and patent protection is to prevent someone else from using the name of that party not just to the detriment of the company or person owning it, but to the advantage of the person who doesn't own it. Take the website built regarding Madonna and how she was able to force the website to not only shut down but that she could take ownership of the website address (pursuant to proper registration and so forth). In your terms, yes, if a trademark is current and active and your product in no way is confusing to the buyer as the same as the other, the issues of unfair advantage come to play. The U.S. Patent and Trademark Office provides many examples of proper and improper use. Further, it also lists many manuals and guidelines, including the Trademark Manual of Examining Procedure, which is used by legal professionals. There are fraud cases on the website, as well. Since you bring up confusingly similar, think about it from the perspective of what the product is or industry. If you use the word and it is in the same or generally the same area of product or service like makeup or clothing, you can run into quite a bit of trouble, not just regarding trademark infringement but also with federal authorities (think counterfeit products).


IMPORTANT NOTICE: The Answer(s) provided above are for general information only. The attorney providing the answer was not serving as the attorney for the person submitting the question or in any attorney-client relationship with such person. Laws may vary from state to state, and sometimes change. Tiny variations in the facts, or a fact not set forth in a question, often can change a legal outcome or an attorney's conclusion. Although AttorneyPages.com has verified the attorney was admitted to practice law in at least one jurisdiction, he or she may not be authorized to practice law in the jurisdiction referred to in the question, nor is he or she necessarily experienced in the area of the law involved. Unlike the information in the Answer(s) above, upon which you should NOT rely, for personal advice you can rely upon we suggest you retain an attorney to represent you.