Saturday, October 18, 2008

Many companies in different business lines have similar names and should be careful about trademarks


I have recently noticed more examples of companies in different lines of business with the same name and with domain names spelled almost the same (sometimes the TLD is different, sometimes there is a hyphen). Sometimes one company has a USPTO trademark and the other does not.

I am under the impression that generally it is all right for companies in different (and non-competing) business lines to have the same name, as long as there is no reasonable chance of customer confusion or some act of bad faith (an attempt to connect another company with pornography, for example). However, when an entity or new company wants to use a trademarked name in a different line of business, it should check with a trademark attorney first. It is likely to be a good idea to go ahead and apply for a trademark with the USPTO and make sure that the USPTO will accept it. Look here at ip-brands discussion (look at the POLO example).

An important concept is the Trademark Acceptable Identification of Goods and Services system, link here. The 45 basic classes are identified here but the USPTO requires more specificity in identification than these categories with an application.

Remember that ICANN has inexpensive administrative procedures to resolve domain name disputes where “good faith” is claimed.

Attempting to claim parody of another’s trademark can be dangerous. Trademark is more resistant to parody than copyright in the “fair use” area. For example, see this discussion at World Patent & Trademark News.

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