WHAT'S IN A [TRADEMARK] NAME?  

trademark
A trademark name image or slogan represents a business on many levels; here are some recommendations to ensure its availability.

 

So you want to start a business, launch a product or offer a service and you think to yourself…..what am I going to call this?

What name am I going to choose and how do I go about choosing the right one for me?!!! So many options and so little time to get the naming show on the road in order to launch your business!!!

Well believe it or not, no matter what name you choose the most important thing for you to consider is whether someone else thought of the same name or one similar to it and has or is currently using it.

A Google or similar type search should be your first step in attempting to determine whether the same name or one similar to the one you are thinking about using is mentioned in the world wide web. If there is a “hit”, you should think twice about using it right away without further research.

Although most people don’t engage an attorney in the early stages of their start-ups, it is advisable to engage an intellectual property attorney to assist in conducting research regarding availability of the potential choice. Be aware that there are limited and comprehensive search options which affect the total cost of the search.

If you will be choosing a name, and will possibly include an image, or slogan, you should consider authorizing the comprehensive search option to determine all prior commercial uses. Having conducted a search reduces the risk of a finding of infringement of another’s name or trademark.

An example of what can go wrong in failing to do research on the use of a name is the case of International Star Class Yacht Racing Association v. Tommy Hilfiger, Inc.,U.S.A., 80 F.3d 749, 753-54 (2d Cir. 1996

In this case, Tommy Hilfiger used the term STAR CLASS on garments following only a limited trademark search in the clothing category conducted by Hilfiger’s attorneys for the mark STAR CLASS.

The limited search did not pick up the registered mark of International Star Class Yacht Racing Association (ISCYRA) for its yacht club membership services. As it turns out, yacht club membership services is unrelated to clothing and the trademark registration for STAR CLASS came up with no “hits” for use in the clothing category. Hilfiger’s attorneys recommended a full search, but Hilfiger used the mark without such a search.

The U.S. Court of Appeals for the Second Circuit believed that Hilfiger should have conducted a full trademark search that included a search of sailing related goods, the source of inspiration for the infringing mark. It was Hilfiger's choice not to perform a thorough search that lead to the Court of Appeals to remark that a party cannot avoid its duty under the trademark laws with such willful ignorance of another’s trademarks.

At stake were Hilfiger's sales of the “infringing clothing” using the similar name and trademark of International Star Class Yacht Racing Association in the amount of $818,419.85 which damages included a request for reimbursement of attorney’s fees. The lesson to be learned - conduct a thorough trademark search, it reduces risk from a business and litigation perspective.

Next page: 4 Steps to determine availability of a trademark name or slogan 

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About the author

Cecilia Guerra

Cecilia M. Guerra, Esq. was born and raised in Queens, NY. She is a first generation Honduran-American.  A student of both parochial and NYC public schools, she went on to attend John Jay College of Criminal Justice- CUNY in New York City and is an alum of Hofstra University (Maurice A. Deane) School of Law School in Hempstead, NY.
 Cecilia's practice areas include intellectual property, entertainment, contracts, commercial leases, international trade/e-commerce, and transportation law. Currently, she is in-house counsel for Purolator International, Inc. an international logistics services company headquartered in Jericho, NY with 35 offices within the United States and handles the U.S. legal division.