Miami, FL asked in Trademark for Florida

Q: could i use the word with an added city ? when the main word has a trademark

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2 Lawyer Answers
Sarah Teresa Haddad
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A: The answer to your question depends on how and where you seek to provide in commerce the goods or services that the proposed trademark is attributed to. If for example, the origin of your goods or services come from outside the city you're seeking to incorporate in the trademark, this could lead to consumer confusion of the original source of the goods or services. Another example is If another entity or person has already incorporated that city name into their trademark that they have used it for the same class of good or services, this may also lead to consumer confusion that the source of your particular goods or services is attributed to that other entity or person. An example case was the City of New York v. Lopez, where it was held Lopez's trademark including 'NYC' infringed the city's trademark in the same trademark class of goods or services.

James L. Arrasmith
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A: Using a trademarked word with an added city name can sometimes help distinguish your use from the original brand. However, it's important to ensure that this combination doesn't imply any official connection or endorsement by the trademark owner. The key concern is whether consumers might be confused about the source of your goods or services.

Additionally, the uniqueness of the trademark and the relevance of the city name play a role in determining if your usage is acceptable. If the trademark is well-known, even adding a city might not be enough to avoid potential legal issues. It's also essential to consider the industry and how the trademark is used within that context.

To protect yourself, it's wise to research existing trademarks and their geographic uses thoroughly. Consulting with a legal expert can provide clarity and help you navigate any potential challenges. They can offer advice tailored to your specific situation, ensuring that your use of the trademarked word aligns with legal guidelines.

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