Trademarks, anyone have experience?

[Kovachi]

I'm starting a new company and found a company name I'd like to use. I found the .com parked and owned by someone, offered an amount and he's willing to accept the amount, nice one word domain (registered since 1997).

Checked TESS (US government trademark search registry) and saw only one company using the same word as the one in the domain I'm planning on buying, which I'm planning as my company name.

They're in a completely different industry, not even related in the least bit. I don't believe this will be a problem down the road? I know of multiple companies with the same trademarked words in different industries.

Anyone with any insight to give me a little piece of mind before I drop a nice chunk of change on the domain and go forward with my own trademark in the industry I'm planning to enter?

[2MuchMark]

Check out http://legalzoom.com

[DBS.US]

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[johnnyloadproductions]

Originally Posted by DBS.US

Great podcasts http://barelylegalradio.com

Thanks for that!

[Kovachi]

Originally Posted by **********

Check out http://legalzoom.com

Thanks, well aware of LZ

Just seeing if anyone has any real world experience with this stuff, I know there are people here but it's 10pm on a Tuesday lol.

Upon further investigation, it looks like the other party is using more of a traditional trademark and I would be using more of a "service mark" trademark... hmmm

[Barry-xlovecam]

Checked TESS (US government trademark search registry) and saw only one company using the same word as the one in the domain I'm planning on buying, which I'm planning as my company name.

You want to use the name and not trademark the name?

1. They own the rights to use that name.
2. Are they using the name and how?
3. They may have a valid claim in a WIPO action.

I would just find another name or retain an attorney to negotiate a possible agreement with them before you buy that domain name.

[Kovachi]

Originally Posted by Barry-xlovecam

You want to use the name and not trademark the name?

1. They own the rights to use that name.
2. Are they using the name and how?
3. They may have a valid claim in a WIPO action.

I would just find another name or retain an attorney to negotiate a possible agreement with them before you buy that domain name.

Well, I plan on using the 'word' as my company name. I'm not sure how they are using the word/name but they have it trademarked in a different industry (very different). I guess it may be best to consult an attorney.

[CYF]

I'm not an attorney and this isn't legal advice.

Basically it comes down to industry and confusion.

Delta is a trademark for an airline. Delta is also a trademark for a faucet company. Two different industries. Is a consumer likely to be confused that Delta airlines made the Delta faucet in their kitchen? No. That use is fine.

Now let's take Apple. They make computers and monitors and music players. A new company starts up and tries selling Apple brand televisions. They're in a similar industry of consumer electronics, and yes consumers are likely to confuse the two brands so the use is not ok.

One case where it's not OK to use a trademark at all: "famous marks", basically trademarks that are famous. Things like Coca Cola, Ford, McDonalds, Marlboro, etc etc. Ford makes cars, but you're not allowed to make Ford t-shirts because the mark is famous and people are likely to confuse it. You can't make Xerox tissues, because people are likely to think it came from the photocopy company.

That's basically it in a nutshell.

[acctman]

i do my own trademarks... just submitted my third one about 2 months ago. the process is not all that difficult. USPTO has a youtube video which is linked on there site on how to submit a trademark, common mistakes, and does and donts. http://www.uspto.gov/trademarks/process/TMIN.jsp

[Kovachi]

Good info, CYF that's about how I understand it too

[DBS.US]

Originally Posted by CYF

I'm not an attorney and this isn't legal advice.

Basically it comes down to industry and confusion.

Now let's take Apple. They make computers and monitors and music players. A new company starts up and tries selling Apple brand televisions. They're in a similar industry of consumer electronics, and yes consumers are likely to confuse the two brands so the use is not ok.

That's basically it in a nutshell.

Lets say you have a recored company called Apple Records, it's ok for someone to start a computer company called Apple Computers? Then could the Apple computer company start a off branch company selling music downloads and call it Apple Music? Could Apple Music sell downloads of Apple Records songs? What about trademarks? If the Apple records company had a trademarked logo of an apple core could the Apple computer company use a logo of a apple with only one bite out of it? I'm confused

[famous]

We always use legalzoom for trademarks. Ends up at about the 500 mark. When you submit one legalzoom sends us a list of all registered trademarks that are simular in name and tells what industry they are in. If you have a simular name and industry as one already registered you will have a hard time getting it. If nothing is simular then 99% of the time you are all good. Simple as that.

[LiveDose]

We are dealing with this area right now with a sportswear company in Europe. If a company has a mark and they have deep pockets and someone in the organization believes they have a right to the name be prepared to battle.

[CYF]

Originally Posted by DBS.US

Lets say you have a recored company called Apple Records, it's ok for someone to start a computer company called Apple Computers? Then could the Apple computer company start a off branch company selling music downloads and call it Apple Music? Could Apple Music sell downloads of Apple Records songs? What about trademarks? If the Apple records company had a trademarked logo of an apple core could the Apple computer company use a logo of a apple with only one bite out of it? I'm confused

Basically Apple Computer and Apple Records had an agreement that Apple wouldn't get into the music business. If I remember right the issue started because Apple's computers were capable of playing sounds and music. I think there was another lawsuit when Apple came out with the ipod and itunes, that got settled with Apple paying Apple Records a bunch of money.

[V_RocKs]

BUY!

You can always litigate later.