You are here:

Copyright & Patents/Avoiding infringing on a trademark

Advertisement


Question
QUESTION: Dear Mr. Black,

I wish to use a word which is already used by another product as a trademark.  

The same word is used in another product trademark, but in the second case its separated in the middle, and in another it is different in that it has capitals, and in another still its changed into a logo.

How different does my design need to be in order that I can use the same word for my product?

Is it sufficient to change the font, colours, individual letter sizes, use underscoring, use a little graphic? Or do I have to change the word into a logo?  If so, at what point does a word change into a logo?

ANSWER: The key questions are "How strong is the Mark?" and "Is there a likelihood of confusion (Does someone buying your goods/services believe that the source is the other company? -- Are you trading off of the other Mark?).

A couple of examples --

If you want to use the word "McDonalds" or even the prefix "McD" in the name of your restaurant, you most probably will have problems, because "McDonalds" is such a strong mark and people coming to your restaurant will believe that you have some sort of affiliation with McDonalds.  The quality of the food that you serve reflects on the McDonalds name.  McDonalds has many attorneys searching for companies that may be doing this all over the world.

Another example, "Harry Potter" is a very strong mark.  Originally, the mark was used for books, but has expanded into toys, educational materials, videos, games, and many other areas.  The owner of the marks has registered this mark many times, so if you were to search, you may conclude that the multiple registrations were owned by multiple entities.  They are not.

It would be a horrible situation for you to select a name and use it for several years and make your company profitable, establishing substantial good will in the mark, only to have to change your mark and start all over again.  I ask you, is it really worth the risk?

---------- FOLLOW-UP ----------

QUESTION: OK, Thanks.  

That's very interesting.  By the sounds of it, in short, the more likely the chances of the similarity being discovered, the more difference there needs to be between the two said trademarks.  

In my case, Im not trading, nor do I have a trademark.  Im only discovering that the name I would like to give to a product 'ChromaZone' is owned by another company (not a vhousehold name one though)

Aside from the fame factor of the mark though, there must be a line drawn where the visual similarity bewteen two trademarks is so high that the trademarks office would refuse to register it.  At what point is that reached?  For example, just changing letters into capitals, changing colours etc?

Answer
Dale,
The examples that I gave you "McDonalds" and "Harry Potter" are two very strong marks.  Both of these marks are worth hundreds of millions of dollars worldwide.

Trademarks are registered for particular classes of products -- see for example http://www.tmweb.com/trademark_classes.asp

For example, "Cadillac" is a registered trademark of General Motors.  If you use "Cadillac" on any product relating to the automotive industry, you will receive a stern warning from a General Motors attorney to stop your use.  However, others have registered the name "Cadillac" and used it on jewelry, on fragrances, on spirits, and other products and there is no problem with General Motors.  Anyone buying a wristwatch (for example) with the brand "Cadillac" would not think that it was made by General Motors.  There is "no likelihood of confusion" as to the source of the wristwatch.  If the wristwatch stops working after 2 weeks, that is no reflection on the quality of a Cadillac motor car.

And, Dale, the example that you present, where you are taking a word out of the dictionary, altering its spelling and capitalization will not save you from a potential trademark violation. If I open up a fast-food restaurant and call it "Macdonalds" (different spelling and capilitaztion), there is still "likelood of confusion with "McDonalds" and their attorneys will still be after me.  If I sell garbage food, it is a reflection on "McDonalds".

Dale, I hope that this helps and have a good weekend.

 --Gerald R. Black
   grblack@usipattorney.com

Copyright & Patents

All Answers


Answers by Expert:


Ask Experts

Volunteer


Gerald R. Black

Expertise

Intellectual Property Patents Global Patent Rights PCT Technology Transfer Copyrights Trademarks

Experience

Registered to practice before the U.S. Patent Office Admitted to Practice Law in Michigan, California, and Ohio

Education/Credentials
Capital University Law School - JD University of Cincinnati - BSME

©2016 About.com. All rights reserved.