Legal Question in Intellectual Property in New York

Re: Trademark

The simple answer is "probably". It depends on the renown of the other mark, whether the goods are a reasonable area of expansion for the the other mark, etc.

I'd be happy to offer a free consultation on this issue.

Re: Trademark

Whether would be infringing on the trademark or not will depend upon whether your use will create confusion in the marketplace as to the origin of your (or their) goods and services. This is the kind of analysis that has to be done carefully, on a case by case basis.

The possibility of actual infringement is not the only consideration. One also has to consider the question of whether your use will likely provoke the other side to engage in an attempt to shut you down - which could be quite expensive.

If you'd like to arrange a consultation to discuss the specifics of your use, please feel free to get in touch. The cost of the review will be far less than the cost of making a mistake.

Re: Trademark

You have asked some very good questions. Trademarks are not very well understood by the general public.

From your question, I am not sure if the trademark in question has a �tm� or a � after it. Anyone can use almost anything as a trademark and you are legally entitled to use the �tm� notation after your mark. You must register your trademark with the USPTO in order to legally use the � symbol after your mark. Registration of your trademark does not confer your right to the mark, rather it enhances your rights including the right to sue. Your rights to the mark actually spring from your use of the mark in commerce.

Unless the mark is famous (famous marks such as McDonalds, KFC, Kodak, etc. have different standards than non-famous marks and even very different endeavors are likely to be found confusing), the fact that your business is completely different from the other company will likely allow you to use the mark. This is not absolute. If the other company has started to use the mark in a broader context, they might oppose your use. The purpose of a trademark is to identify the source of a good or service with a particular provider. The standard applied is likelihood of confusion in the marketplace. Would a consumer likely be confused as to the true source of the good or service. The less the likelihood of confusion, the safer it is to use the mark.

You may want to start with a trademark clearance search and then if positive, file a trademark application. Feel free to contact me if you have any other questions or would like further clarification.