Q: Trademarking a name that is already trademarked. Same industry or not?
I'm looking to trademark a business name (call it "FishExample"). FishExample is currently trademarked for "furniture to store fishing supplies and goods". My FishExample business will be an online community/resource for fishermen (unrelated to furniture, but tied into fishing). Is this an infringement on the trademark because it's connected to the fishing industry? Or would it be valid because it's a digital product, and unrelated to furniture?
A: As usual with so much in the law, the answer is, "It depends." A trademark owner acquires rights in their mark, whether for goods or service, by using it in ways that convey to consumers that there is a particular source offering the goods/services. From what you write, it is not clear what kind of online community resources for fisherman you want to provide. If it is educational in nature, such would be a class of activity that could be quite different from the furniture store. For example, 3 different companies have rights in the mark "Dominion." One is a bank, another produces sugar and the third produces electricity. A consumer is not going to be confused about which Dominion they are dealing with. In your case, there is the overlap of the fishing theme. So you would need to examine more closely what options you may have.
A:
Great facts. We can help and explain why. This is doable.
Please contact us.
Bill Hulsey
IP & Patent Lawyer
Nuclear Engineer (USN-SS); Member, National Society of Professional Engineers
Regional Economic Developer (M.A.Econ | CEcD*)
HULSEY, PC
A Gold Standard in IP for a Competitive Entrepreneurial WorldSM
Founder, HULSEY PC: Patent Lawyers / IP Counsel
Founder, EconoVentionRED: Invention-Based Regional Economic Development
Friend and Fellow, Innovation, Creativity & Capital (IC2) Institute, The University of Texas at Austin
*CEcD (Certificate in Economic Development, In-Progress), International Economic Development Council
Member, Texas & Tennessee Bar Associations; Fellow, Texas Bar Foundation
Ambassador & Symphonic Chorus Tenor, Grammy-winning Conspirare Ensemble
Paul Harris Fellow, Rotary International (Westlake-Austin, Texas); Pres.Elect. Westlake, Tx Rotary Club
Member & Lecturer (Tech-Led Dev.), Southern Econ. Dev. Council & Texas Econ. Dev. Council
AV Pre-Eminent Judicial Edition Attorney & Platinum Client Champion, Martindale Hubbell
Best Lawyers in America and Best Law Firms in America, US News & World Report
One of Austin’s and Memphis’ Three Best Rated Patent Lawyers
Top 1% Most Honored Professionals / Better Business Bureau A+ Rating—Ten Years
US Navy Submarine Service / Nuclear Trained / Lieutenant Commander (Ret.)
Bill.Hulsey@HULSEYIPLaw.com; www.HULSEYIPLaw.com
Texas Office—(512) 478-9190; 3300 Interstate I-35 North, Suite 700, Austin, TX 78705
Tennessee Office—(901) 522-5139; 5100 Poplar Ave, Suite 2700, Memphis, TN 38137
Arkansas Office—(479) 268-7848; 900 SE 5th St, Bentonville, Arkansas, 72712
Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.
The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.
Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.
