Expert: Shannon Moore - 8/9/2009

Question
Hi, I've had an idea for a retail store that I've been wanting to open here in the U.S. for a while and I finally came up with a name and logo for it.  The problem is, the logo and name are being used with a store in another country (Argentina).  As long as that company isn't operating in the United States, am I still able to use that name and logo as well as trademark them so that nobody else can use those here?

Thank you

Answer
Dear Chris,

Correct - trademarks are on a country by country basis. There are 2 notable exceptions: (1) the OHIM or EU trademark and (2) the WIPO trademark. I'd suggest checking here http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp to ensure that they do not have a WIPO trademark as the US is one of the member countries.

Another exception I can think of is if that name & logo are famous, they may have rights to it outside of Argentina. Famous marks are granted a special kind of protection under trademark law. The basic gist is that if a company is well known enough and if another party attempts to use the same or similar name, regardless of industry, that is going to confuse the well known company's customers.

The main justification for this is if “the owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.”

http://www.uspto.gov/web/offices/tac/tmlaw2.html#_Toc52344332 – Link to above quote

But basically, yes you are correct, as long as the research proves clear here for the US, you should be fine to use the name. However, this is still an issue I'd recommend you speak to a trademark attorney about as there are going to be details & nuances to every situation.

You'll also want to ensure that you've had the proper research done. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

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