Can I use a name similar to one trademarked if the goods and services are different?

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Can I use a name similar to one trademarked if the goods and services are different?

I am looking at naming my company,
currently just a sole proprietorship,
but possibly expanding depending on
success. The name I want to use has 5
trademarks for it, but none are
offering the same services/goods that I
will offer. Can I use the name and
trademark it? Does it matter if I add
the word ‘industries’ to it in terms of
being able to trademark or copyright
it?

Asked on July 15, 2016 under Business Law, California

Answers:

SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 4 years ago | Contributor

Don't do this:
1) While if their products/services are sufficiently different, it is true that it would not be a trademark violation, if they can creatively argue for similarities and a judge buys that argument, or they can show they are in the process of expanding into those areas, or they have similar products or services of which you are not aware, you could lose an infringement case and be unable to use the name, and/or have to pay compensation.
2) Even if you could win an infringement suit, do you want to spend time and money defending a lawsuit, if the other side does try to bring an action becaue they don't like you using their name? Almost anyone can initially file a suit and force the other side to respond--there is no "pre-screening" for case validity, so even if there is almost no chance they'd ultimately win, they can force you to waste resources and distract you from your business if they want--and with 5 trademarkes, there's a good chance there will be some objection.
Adding "industries" would make no effective difference. What you propose is borrowing trouble unnecessarily: choose a name that's completely free to use instead. 


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