Woodstock, NY asked in Intellectual Property for New York

Q: Can I use "Footloose" which is trademarked, in part of the name of my own business? For example, "Still Footloose"

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2 Lawyer Answers
Kathryn Perales
Kathryn Perales
Answered

A: Maybe. A trademark is reserved for a particular category of goods or services, sometimes more than one. So you wouldn't be able to use the same or a confusingly similar mark for the same or similar goods or services.

if you want to use the same mark for a completely different category of goods or services, and it would not be confusing to a consumer as to the origin of the goods or services, then you could be OK.

You'd want to get some advice from your own trademark attorney before you spend a lot of money adopting and marketing your business as "Still Footloose."

John B. Hudak
John B. Hudak
PREMIUM
Answered
  • Milford, CT
  • Licensed in New York

A: In addition to trademark infringement there is trademark dilution. Under the Trademark Dilution Act 15 U.S.C. 1125(c) if a mark is used which impairs the distinctiveness of a famous mark or harms the reputation of a famous mark, the owner of the famous mark can obtain an injunction to stop the other user from using the mark. This injunction can occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. 1125(c) Therefore use caution when a famous mark is used.

Consider hiring a lawyer to review the specific facts to your individual situation.

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