Legal Question in Business Law in Illinois

Hello I have a question that I desperately need an answer to as soon as possible. I do not know exactly what I should do to avoid trademark infringement issues and need to know the best way of setting up my business. Here is my dilemma:

I have a business name that is very common, however it is also an acronym for what my business really stands for, I will use that acronym example of FART (this is only an example). We go by FART however FART stands for Fast Action Response Team. This is a very common name (lets just pretend) so therefore when looking in the trademark name registration on ustpo.gov I saw over 864 business that had the word FART in their name and 10 that used FART as the sole name however none under the classification that I would use. I would like to go about using this name for my business but am afraid 3 months down the road I will get a letter from the government saying that the name cannot be trademarked and is not available and I will have to scrounge around to find another name for my business. Another name would be something to consider as well because I can't find a domain name that is not already taken under "Fart". I also can't register a dba name in the state of which I reside as someone already has it listed as the name of their corporation. I considered registering in Nevada using a DBA name for this state. This is possible but I am trying to review all options.

My second option was to change the name all together and call it I Luv FART. I don't have a problem getting this domain name at all however I don't know how this would work. Do I put I Luv FART in my logo and the meaning of the acronyn underneath? Will I always have to refer to the business as I Luv FART when we really just call it FART? We want to make T-shirts. Do they have to always say I Luv FART or just FART with no trademark issues. Do I have to get the I Luv FART trademarked and the meaning of the acronym too separately? How do I do all this to where I am protected and can begin making some money. I am fine with naming the business I luv FART but would like to refer to it as just FART on T-shirts etc and I am not sure how the trademarks work? I don't anyone stealing the meaning of FART either and making money. How do I do this? Please help.


Asked on 7/08/10, 1:53 pm

1 Answer from Attorneys
Stephen Messutta

Don't use examples. You can't be helped by using examples or hypotheticals, because real issues require real information.

You don't understand how marks work. It's not up to you to determine whether it may be ok even if it is in one class or another -- the basic rule is this: if someone in the general public will be confused between your company's product and the product of another company with the same or similar mark, you can be stopped, especially if they are a federally registered mark. It's all viewed from the point of view of the prospective consumer. And if the products are similar in any way (remember classes are often similar, so again giving an "example" doesn't help), you are at greater risk.

You can try using a mark here in Illinois but the Illinois Secretary of State will not let you use a mark/name that is "deceptively similar" to another licensed name, and it sounds like there is at least one. If you try to license yourselves out of state and then use the name here, you run the federal, and potentially Illinois trademark risk as above. And if you try to license the out of state company by name here, the Illinois Secretary of State requires that you use the name "XYZ Company OF ILLINOIS" in all business dealings, so it would defeat your purpose.

I suggest you hire a trademark attorney if you intend this company to have a long and profitable run. The last thing you should be worrying about every day is whether the name will hold up. It could ruin everything.

Here's a short story. So there was this hamburger stand for years at Ridge & Clark in Chicago. VERY prominent corner. They changed their name to "Donald Duck's" and had a huge Donald Duck sign on the roof. Disney went after them. Next thing you know the name became "Donald Duk's", then the duck bill was changed to short lips, and finally the name was changed to "Duk's". Every change probably cost them thousands in signage costs, legal fees and what not. Today it's gone completely. Get the picture?

Read more
Answered on 7/08/10, 7:30 pm


Related Questions & Answers

More Business Law questions and answers in Illinois