Trademark Infringement

I’m picking out a name for my new business. Should I be worried about violating another company’s trademark?

When you’re picking a new business or product name, it’s critical to do your due diligence. Before you pick a name, do a Google search for similar names, and then search the U.S. Patent and Trademark Office (USPTO) trademark database at: tess2.uspto.gov. Look for the same name as well as similar names, and look for related products as well as unrelated products (or services).

You are not required to register a trademark with the USPTO, although registration provides numerous benefits. Merely selling a product or offering a service under a brand name can create a “common law trademark.” Common law trademark rights are limited to the geographic area where the mark is used.

If you use a name similar to another business, you may receive a cease and desist letter. If you ignore such a demand, or are unable to resolve the conflict, you might end up in an infringement lawsuit and could be forced to change the name of your business.

Proving trademark infringement requires showing that the other business has a valid trademark, which you used in commerce without consent, and that customers would likely be confused between the two marks.

In order to show use of a mark in commerce, a claimant needs to show that the infringer’s use of the mark has a substantial effect on interstate commerce. It’s a low standard, and can be met if you advertise in more than one state or online, or offer to send products into multiple states.

The “likelihood of confusion” element is the most important, and exists when an intended consumer looks at your product and associates it with the senior user. If you sell sneakers and the other mark is for sneakers also, there’s a high likelihood that customers will be confused about the products. If you sell sneakers and the other mark is for toilets or another completely unrelated good, it may be less confusing.

If the goods are related but not the same, determining a likelihood of confusion is a bit harder. Courts consider the strength of the claimant’s trademark, the similarity between the marks, whether customers have actually been confused, how the products are marketed, the type of products, and other relevant factors.

If you lose a trademark infringement case, the court may grant injunctive relief to stop you from using the mark, as well as monetary damages. Your “intent,” or good or bad faith is irrelevant; they simply have to prove that you infringed.