What are some options one has if they are unsure if the similar use of a trademark might constitute infringement of that trademark?

If one is unsure if the use of a name similar to a trademark might be considered “confusingly similar” and possibly pose concern for infringement, what are the options available to that person? Is the practice of purchasing trademarks normal? If so, how does one go about doing it? As an alternate option, if one is unsure if a similar use of the trademarked term might cause issues of infringement, could one simply ask for permission from the trademark owner to license the trademark to make sure there would be no possibility for infringement litigation when you use the term?

Asked on September 9, 2011 under Business Law, Minnesota

Answers:

SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 9 years ago | Contributor

1) Options: either don't use the trademark; use and take the risk that there will be an infringement claim against you; or try to either buy the other mark or get a license (or permission) that will let you use your mark safely.

1a) Note that if there is an infringement claim and you lose, you could owe money--e.g. all profits you made by using the infringing mark--and also be ordered to not use the infringing mark.

2) Buying a trademark is not uncommon; you contact the owner and make him/her/it and offer. They don't have to accept, or they may want more than you'll pay, but you can certainly try to work something out.

3) Similarly, you can ask for permission to use your mark, either for free or by paying some fee.


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