Hello all, I am about to launch a network of sites which will all be lead by a character which will be identified as the mascot of the brand. I am currently in the process of finding a name for that character/brand. I have narrowed it down to a few choices and thus I decided to check if there are any tradermarks registered for those names. I found that there is a bunch of them... and it makes sense. I want it to be short, memorable and meaningful (as in... it will most likely be an actual word). An good example is Adit. Imagine that I would create a network of sites on different themes that would all have the ending Adit (ie. FashionAdit or FashionByAdit or something like that). Now, if you search for Adit trademarks, you will find that there are a few of them that are live. For example, there is Adit, ProAdit, Adit Productions etc... So, I have 1 question* about that. There are also a few dead trademarks such as Adit or The Adit. That's my 2nd question** and there is a 3rd question in there as well... And now on to the questions. *1) If Adit is an already registered trademark, then how could ProAdit or Adit Productions also trademark their names? *2) Since there used to be Adit and The Adit registered at some point, then again, how did they manage to coexist? Wouldn't the trademark of Adit restrict any use of Adit in any form whether that is The Adit or ProAdit or whatever else? I am not 100% familiar with trademarks, but it is to my understanding that if a name is an actual word with a meaning, then you can use it, as long as you don't directly compete with a company that has registered it in your industry. In other words, I could use the trademark Amazon or Apple if I don't have an online store or sell computers... For example, if I was a Legal Service, then I could be called Amazon Legal or Legal Apple. Is that correct? Is there a fine line that you should not cross when it comes to things like that? *3) And this is the important question... Could I use Adit as my brand name? Remember, I am planning to start a whole network of sites, so I would prefer not to restrict the use of my potential brand in any way. Adit is not the actual name that I plan to use, but I feel that it serves as a good indication of the nature of the names that I am looking into. Short, brandable, pronounceable, and easy to remember. Practically each of those names has at least a few trademarks attached to them. Now assume that I plan to make FashionAdit, HealthAdit, ComputerAdit, CleaningAdit, and everything else you can think of. I do not want to talk about the concept that I have in mind, but the idea is that it can expand into any industry. And lets look into the specifics... Adit = On-line advertising on computer communication networks. Adit Productions = Cable television programming production; Videography services. ProAdit = Application service provider (ASP) featuring software for posting multiple classified ad listings and employment opportunities on third party computer databases simultaneously. The three above are all live trademarks. With those in mind, can I make a character/brand that will be present in all of my upcoming sites such as FashionAdit, HealthAdit, ComputerAdit, CleaningAdit? And furthermore, would I be able to also launch OnlineAdit and CableTVAdit and ApplicationAdit (these are examples in the industries of the companies that trademarked the name), or would I not be allowed to do that due to those trademarks listed above? I would really appreciate any input from someone who actually knows how these things work. I can assume that I can do it - but I can never be sure, and while I would love to be able to pay a professional for the answer, I am at the beginning stages still and I do not have the resources to do that. Thank you so much in advance!
The simplest answer to all your questions is something trademarks aim to stop: likelihood of confusion. What can be complex is if that indeed might occur. While it's not limited, that depends on consumer perception, strength of the trademark if any, and its usage. It's arguably easier if it involved, say, a common, everyday word like sonic or chief or whatever, but not so much when it especially involves unique or made- up ones like google or similar. For example, the word Delta is used by an airline, a faucets maker and a pipe company. They all use the common word Delta, yet none confuse one another (so far) in each of their respective and distinctive fields. Contrast that to, say, Microsoft or Facebook. They're two common words used uniquely as one to identify their source of products and/or services, and they're so famous that the chances of using those words for something not similar yet not be confused is quite slim to none. So in your case, you'd have to ask yourself how likely will people confuse your use of the term with those others, especially if one of them is arguably famous and protective of its mark. Be ready to consult a lawyer with real-world experience as well since s/he is truly the best one to tell. HTH. Good luck on your venture.
In addition to what DaveZan said, there is another common trademark infringement called "tarnishment." An example from a real law suit is the case of Toys R Us versus Adult Toys R Us. Obviously, the adult business's use would serve to tarnish the brand reputation of Toy's R Us. As far as the abandoned trademarks, they may be available if the previous owner has not used the TM in three years. There are other legal test to determine abandonment, but the three year rule provides solid legal footing to proceed with using that TM. TM protection is granted to the first to use the mark, or the first to register. Just because a TM is not registered does not mean it is available. This is why it is important to do a TM search of publicly available information to uncover unregistered TM's. You would not want to develop a brand only to be sued for TM infringement. Which brings me to my last point. TM protection has to be enforced by the owner in court. Basically, it give you a right to file suit against any one infringing. Regards Yourlawschool.com