Expert: Shannon Moore - 5/22/2008

Question
Hello and I hope this e-mail finds you well. I have to say right off the top that my Trademark Question is a rather general and you might be able to answer it, if not, I understand that as well. However, I have a name for my company that I am looking to Trademark here in the U.S. While searching the net for some information, I ran across an Australian Company with a name that is relatively similar to my own. In fact it's almost a duplicate. In your opinion, would I have a problem trademarking that name here in the U.S.? I appreciate your thoughts.

Answer
Dear Chin,

Is the Australian company offering the same or similar services as you intend to? Are they conducting business in the US? Are you wanting to branch out & conduct business in Australia?

Trademarks are done a country by country basis so on a very surface level, I'd say as long as you're just US & they're just Australia, you should be fine.

Of course, it's necessary to research the mark comprehensively prior to filing to ensure that there is no possibility of infringing upon another party.

This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files. Then, if clear, you can decide if you would like to file for a Federal or a State trademark.

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

Here's what the USPTO has to say about this matter:

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

Please feel free to contact me with any other questions. Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com