Elmhurst, IL asked in Copyright and Trademark for Illinois

Q: Trademark/copyright issue on using university-associated Catholic name

I have a trademark/copyright question regarding the use of a name that a university also uses. Although I believe the university has trademarked the name, the name is related to Catholicism and is not owned by them exclusively, meaning any Catholic can use it. I plan to use the name for a classified ad business that has no real similarities to the university or its services. Can I legally use this name for my brand without infringing on the university's trademark/copyright?

Related Topics:
2 Lawyer Answers
Alan Harrison
PREMIUM
Alan Harrison pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
Answered

A: Trade mark registrations are limited to specific goods / services for which the registrant is *actually* using the mark. A registration that claims goods / services for which the registrant does not use the mark, often can be canceled.

Assuming that the university is not in the classified ad business, their registration probably doesn't recite classified ads as something it covers. The legal waters get a little murky around this point; does the university actually do anything that is "similar" to classified ads? If so, then they might have an argument for "natural expansion" of their trade mark into your proposed line of business.

Any trade mark attorney could advise you further on the specific facts of your situation.

James L. Arrasmith
PREMIUM
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
Answered

A: When considering whether you can legally use a name that's also trademarked by a university, the primary factor is whether your use could cause confusion among consumers. Trademark protection generally applies to specific categories of goods or services. Because your classified ad business is significantly different from the educational services provided by the university, your risk of infringing on their trademark might be reduced.

However, even if the name is tied to Catholicism and commonly used, the university's trademark could still restrict its commercial use if consumers might mistakenly associate your business with the university. To assess this, think about whether your branding, colors, logos, or marketing might appear related to or endorsed by the university. The more distinct you make your branding from the university's identity, the safer your position will be.

Lastly, it’s wise to perform a detailed trademark search, ideally with professional guidance, to fully understand the scope of the university’s trademark protection. Even though a name is broadly religious or cultural, trademarks can still protect specific commercial uses. Being cautious and conducting due diligence upfront can help you avoid potential legal issues in the future.

Justia Ask A Lawyer is a forum for consumers to get free 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 Justia and you, or between any attorney who receives your information or responds to your questions and you, 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.