I am considering filing for a trademark. I am concerned because I found some websites using the same name that I have for my t-shirt business. The three websites I found using the name are differnt types of businesses (one is a vacation home rental, one is an entertainment company, and the other is just an online community...the online community sells t-shirts, but uses a different name/slogan on their shirts, however they do use their website on some of their shirts...their website has the same name as mine). This name however is not registered with the Trademark office.
Could I still trademark this name???
Any advice/sharing of personal experience would be greatly appreciated.
I am considering filing for a trademark. I am concerned because I found some websites using the same name that I have for my t-shirt business. The three websites I found using the name are differnt types of businesses (one is a vacation home rental, one is an entertainment company, and the other is just an online community...the online community sells t-shirts, but uses a different name/slogan on their shirts, however they do use their website on some of their shirts...their website has the same name as mine). This name however is not registered with the Trademark office.
Could I still trademark this name???
Any advice/sharing of personal experience would be greatly appreciated.
Thanks.
Be aware that a common law trademark may exist, notwithstanding the lack of a trademark in the federal register. You can always file for a trademark for the limited use for which you intend to use it, but bear in mind that it may be opposed by one of these companies.
From what I remember, trademarks are protected to that industry. Its to help consumers not confuse one product from another. I can have a McDonald's Shirt Company (if available) but I can't have a McDonald's Burger Joint. I also believe using (TM) is only temporary till you are in business for a long time and then you get to use (R), for Registered. Thi is the only way to know for sure www.uspto.gov. Also even if a business is not trademaked, if that business is publically recognized and can prove its been in business for a while and has been doing business and making transactions, they might be entitled to the name. Hope this helps, I am going off memory so check the website and do research.
Since you can file your application by class, you may be ok. But since the application fee is non-refundable, it's probably best to get an opinion of an intellectual property attorney.
From what I remember, trademarks are protected to that industry. Its to help consumers not confuse one product from another. I can have a McDonald's Shirt Company (if available) but I can't have a McDonald's Burger Joint. I also believe using (TM) is only temporary till you are in business for a long time and then you get to use (R), for Registered. Thi is the only way to know for sure www.uspto.gov. Also even if a business is not trademaked, if that business is publically recognized and can prove its been in business for a while and has been doing business and making transactions, they might be entitled to the name. Hope this helps, I am going off memory so check the website and do research.
Actually that's not the best example - McDonald's is notorious for suing any "Mc" business so another McDonald's would likely get sued. If I recall my intellectual property class in law school, there were cases where McDonald's sued McSleepy's and McBagels and won both times.
Since you can file your application by class, you may be ok. But since the application fee is non-refundable, it's probably best to get an opinion of an intellectual property attorney.
The only problem with that would be that the attorney fee may likely be more than the application fee. The USPTO has made it fairly easy for a layperson to apply for trademark protection, although if your mark is challenged I would suggest speaking with a lawyer at that point if you're serious about getting that mark.
My recommendation would also be to seek legal advice; true it can be expensive, but you might be able to get access to free or cheap advice through a mentoring service (SCORE, SBA, SBBC, etc.) or educational institution. If not, it might be worth it anyway.
With no companies, or a more related company (like a t-shirt company) using the name it would be a lot more black and white - as it is there are companies that could oppose the mark, theoretically successfully, but it's not obvious that you'd be declined either. Puts it out of the realm of a simple layman's choice.
That is territory a legal professional can better navigate. Especially because they could narrow your application down into something more likely to be approved, while still being useful to you.
That said, Glenn's advice to weight the non-refundable USPTO fees against the non-refundable lawyer's fees and taking a "let's see" approach to whichever is cheaper also makes sense. The biggest drawback would be that the process is drawn out, and you won't know for quite a while whether or not you are going to be able to use the name (meanwhile, you want to start establishing the brand - in fact, having a recognisable brand is an important part of being approved a trademark in the first place).
Tufflaw you probably right. Plus going against McDollars most people end up folding their hands. I remember Wawa forcing a place called MaMas to change their name.
Tufflaw you probably right. Plus going against McDollars most people end up folding their hands. I remember Wawa forcing a place called MaMas to change their name.
The depressing thing is that a lot of these cases may not have merit, but the big corporations are willing and able to pursue these claims and most of the smaller operators simply can't afford to fight. In many cases, all it takes is a single cease and desist letter from an attorney to get results. Unfortunately, this isn't the type of law where you can intelligently go pro se against a big corporation.
Trademark Question 
