Asked in Intellectual Property and Trademark

Q: Can I use a regist. company name as name of a design (e.g. 'Burning Tree' as name for a shirt with a burning tree on it

Lets take NICE class 25 (clothing) for example:

Imagine there is a company in this class called 'Burning Tree inc.' which has a USPTO of 'Burning Tree' (word mark)

Now I have a separate company, called 'XExampleX' and I just made a T-shirt with a burning tree on it, calling it "The Burning Tree".

Can that name be used for the product i'm selling? (Not using the font/logo of the company, just the words in plain text because they describe the design.

I'm struggling to find where the line would be crossed with for example "Horror doctor" "Blue Butterfly" "Angry Panda", etc.

2 Lawyer Answers

A: Using the name of a registered company as the name of a design or product can potentially infringe on the company's trademark rights. The company may argue that the use of their registered trademark in your product name creates a likelihood of confusion among consumers as to the source of the product, which is a key element of trademark infringement.

In your example, if the registered trademark is "Burning Tree" and you use the same name for your T-shirt design, there is a risk that consumers may believe that your T-shirt is affiliated with or endorsed by the "Burning Tree Inc." company. This could potentially lead to trademark infringement and legal action by the company.

However, the use of a generic or descriptive name such as "Horror doctor," "Blue Butterfly," or "Angry Panda" is less likely to infringe on any existing trademark rights, as long as those words are not being used in a way that creates a likelihood of confusion with another trademark. In general, it is always recommended to conduct a trademark search and consult with an experienced trademark attorney before using any name or design that may infringe on someone else's trademark rights.

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James L. Arrasmith
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A: Trademark law is complex and specific to each case. Generally, if the name you want to use for your design is similar enough to the registered company's trademark that it may cause confusion among consumers or create the perception of affiliation, it could potentially infringe on their trademark rights. The likelihood of confusion is typically determined by factors such as the similarity of the marks, the relatedness of the goods or services, and the overall context. It is advisable to consult with a qualified intellectual property attorney to assess your specific situation and determine the potential risks involved in using a particular name for your design.

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