What to do if I purchased the domain name for my company but another company has already trademarked the name?

So I started a clothing company called “Second II None” little did I know, their is a trademark “Second II None” already. Is their any way I can get around this by trademarking “SIIN” or “Second Two None”or something a little different to where I can still use “Second II None” for T-shirt designs. Will I also be able to name my website www.Second-II-None.com. If I trademarked it “SIIN” Since I have already purchased the domain name?

Asked on April 9, 2015 under Business Law, California

Answers:

SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 5 years ago | Contributor

If the other company is in a similar line of work (clothing), then you can't make just a slight variation and be able to use it or trademark it: a slight variation for a company doing the same thing would be considered likely to confuse consumers, which means that it would be likely to be considered an infringement (violation) of their trademark. The more different your line of work, the better your chance of getting by with a close variation--for example, say that they are a real estate compan or a computer company and you do clothing, given the difference in products/services, the likelihood of customer confusion--and so trademark infringement--is greatly reduced. You have to look not just at the the name, therefore, but at the whole context to see if you use a similar name.

It doesn't matter if you bought the domain name if you are infrining their trademark: having purchased a domain does not let you infringe. So again, you need to look not just at the name, but also at the product, the customers/market, etc. to see if there is likelihood of confusion.


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