[shutterbugs]

Hello everyone,

I have a question that is probably considered basic. I have been on federal trademark search looking up my name. A few names actually. Anyway, I noticed that many companies have the same name trademarked. I came accross 6 with the same name trademarked and LIVE. How is this possible. I thought you trademark the name so others can't use it.

thanks

 

[station22designs]

What is your name?

 

[kimura-mma]

Trademarks are registered based on classification. So for instance, Hollister would own separate registrations for various types of products (t-shirts, belt buckles, fragrances, bottled water, etc). It is also possible for two or more separate owners to own the same mark for different classifications as long as there is no confusion in the market as to the brand/company/manufacturer responsible for the product.

 

[shutterbugs]

so... your saying, the same name can be trademarked by different companies if they are in different types of business. for example, The name "Denine" can be trademarked for a company in the skateboard industry even if it is trademarked for a company that sells candles?

 

[kimura-mma]

Correct. As long as there is no confusion that the existing candle company expanded their business to include skateboards. In this example, that probably won't be an issue. But it's possible that other situations could be trickier. It's probably a good idea to consult an attorney if you are looking to trademark a name that is already registered.

 

[shutterbugs]

Great. thanks for the info. One more question. lets say the full company name is Denine Ride Company. Would you have to trademark both the full name and the partial name, "Denine" to use it both ways. Or, can you just trademark Denine Ride Company and use the words how ever you want?

thanks again.

 

[jiarby]

Just like Monster Cables & Monster Mini-Golf....






uh huh

 

[kimura-mma]

lets say the full company name is Denine Ride Company. Would you have to trademark both the full name and the partial name, "Denine" to use it both ways. Or, can you just trademark Denine Ride Company and use the words how ever you want?

You can use it however you want. It's not even necessary to trademark the name in order to use it. Trademarking just allows you to take ownership and offers legal recourse to protect your ownership. But if you only trademark the full name, you will not automatically have exclusive ownership of shortened variations.

 

[binki]

TM's can also be separated by geography for a similar product.

 

[kimura-mma]

TM's can also be separated by geography for a similar product.

To my knowledge, that's only the case for common law trademarks, not federal registrations.

 

[binki]

To my knowledge, that's only the case for common law trademarks, not federal registrations.

could be. i havnt looked too much into that aspect but have read about cases like that.

also, federal registered trademarks may not be enforceable in other countries if you dont do biz there. the widow of frank zappa just lost a case in germany over that aspect. http://www.theregister.co.uk/2010/07/06/zappa_trademark_ruling/

 

[Pollchaps]

Make sure you have a trademark. Just because you register your business, doesn't automatically mean your name is trademarked.

 

[kimura-mma]

also, federal registered trademarks may not be enforceable in other countries if you dont do biz there.

Correct. US federal trademark registrations are only enforceable in the US. Foreign or international trademarks would be needed for other countries.

 

[binki]

Correct. US federal trademark registrations are only enforceable in the US. Foreign or international trademarks would be needed for other countries.

registration is just one part. you actually have to be using the tm for commerce. not doing so is abondonment and the limit in the USA is 3 years of non-use.

 

[susanralf]

The UK IPO website is better to search for TM