Q: Incorporation in Delaware: trademark exists for company name but in different sector
We are going to incorporate a software company in Delaware. There is a trademark for the same company name but in the oil in gas industry in Texas. Also doing a google search, we see that there are other business using the same name in the software sector, but they don't appear to have a trademark. Can we proceed with this business name?
An attorney would need to review all the facts to answer this question. Here are some general observations that may be helpful.
The oil company trademark could be an issue if the products/services are similar. For example, if that trademark is for geo-location services and your software company provides something similar, it could be a problem. If you provide point of sale systems and the oil company's trademark is for drilling contracting, you are likely fine. US trademark registrations apply nation wide, so that fact that the oil company is in Texas doesn't help you.
As to the other software company with the same name, that could present a problem, even if they have not registered the name as a trademark in the USPTO. The other software company could have a state level trademark registration and likely will have common law rights to the name. Trademark rights are based on who used the name first.
I recommend you speak with a trademark attorney. This is not intended to substitute for the advice of an attorney.
A: I suggest discussing the matter with a trademark lawyer prior to spending $$ acquiring and developing the trademark. In the U.S., neither federal nor state registration creates the underlying right to adopt and use a term as a trademark in commerce. Actual use of the mark establishes that priority right under so-called "common law" legal principles.
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