Hi and welcome.
1. Same industry...........very risky. You should search the Internet and federal and state trademark databases, at the very least. You should not use the name if someone in your field or a similar one is using it. You may be able to use the name if someone in an unrelated field is using it, but you should try not to use similar logos, styles, or colors.
Here is the result of some of my research:
Trademark infringement claims are increasingly common. There are eight factors courts use to determine whether one entity has infringed on the mark of another. U.S. trademark protection is granted to the first entity to use a particular mark in the geographic area where it operates, regardless of whether the mark is registered.
Whether infringement has occurred hinges upon the likelihood of confusion by consumers of the trademarks at issue
The U.S. Supreme Court has described the basic objectives of trademark law as follows: "trademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's costs of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the item with trademark is made by the same producer as other similarly marked items that he or she liked in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial and reputation-related rewards associated with a desirable product. "
To establish a trademark infringement claim or an unfair competition claim a business must show that another entity is using a mark confusingly similar to a valid, protectable trademark
Registering a trademark on the Principal Register in the Patent and Trademark Office constitutes prima facie evidence of the validity of the registered mark and of plaintiff's exclusive right to use the mark on the goods and services specified in the registration. A party can rebut the presumption that the registered trademark is valid and that registrant is entitled to exclusive use of mark by showing that it was the party which first used the mark, not the registrant. This is true because a fundamental tenet of trademark law is that ownership of an inherently distinctive mark is governed by priority of use.
Courts look to eight key factors for guidance in determining the likelihood of confusion
In determining the likelihood of confusion in trademark infringement actions the courts look to these eight factors: the similarity of the conflicting designations; the relatedness or proximity of the two companies' products or services; strength of the plaintiff's mark; marketing channels used; the degree of care likely to be exercised by purchasers in selecting goods; the defendant's intent in selecting its mark; evidence of actual confusion; and the likelihood of expansion in product lines.
Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. Some of the factors relevant to determining the likelihood of confusion will always be important, such as the similarity of the marks and whether the two companies are direct competitors. Where the two marks are entirely dissimilar, there is no likelihood of confusion. For example "Pepsi" does not infringe Coca-Cola's "Coke."
Even in situations where a complainant's and an alleged infringer's mark are the same, there may be no consumer confusion and no trademark infringement if the alleged infringer is in a different geographic area or in a wholly different industry. The more similar the marks in terms of appearance, sound, and meaning, the greater the likelihood of confusion. In analyzing this factor the marks must be considered in their entirety and as they appear in the marketplace with similarities weighed more heavily than differences.
A couple of interesting examples of identical marks without consumer confusion concern hot dogs and pizza. In the case of Weiner King, Inc. v. Wiener King Corp., the court permitted concurrent use of "Weiner King" as a mark for restaurants featuring hot dogs in New Jersey and "Wiener King" as a mark for restaurants in North Carolina. Similarly, in Pinocchio's Pizza Inc. v. Sandra Inc., the court permitted concurrent use of "PINOCCHIO'S" as a service mark for restaurants in Maryland and "PINOCCHIOS" as a service mark for restaurants elsewhere in the country.
The courts have stated that their analysis of the eight factors is pliant, which means that there is no bright line test. This is problematic for business owners whose trademark has great value. Due to the absence of a bright line test trademark disputes can rarely be solved without consulting a lawyer. This is not to say that all trademark disputes must go to court. Often, the disputes can be resolved without litigation. Large companies zealously guard their trademarks. If your company receives a letter alleging you are infringing on the trademark of another entity you should not take what you read as determinative, but you should review the allegations with a lawyer immediately.
Here is an interesting Q and A among Trademark experts
QUESTION....During a Trademark search I found one foreign Company that holds a Registered U.S Federal Trademark for a Name of a Food Product, lets call it "Sunny Florida";.. which is a Similar Name to my newly formed Business "Sunny Florida Online". I want to Register with the USPTO, but could their be any grounds for conflict even though both of us are in two different industries and have two different goods/services? Plus the mark is not even the Name of their Company but it will be my actual Tradename.
I just want to be sure before filing an "Intent to Use" Application that even if they try to challenge it for whatsoever reasons that I'll overcome it because I know consumers couldn't confuse us as I am not their competitor.
The short answer is yes, it is possible for more than one company to have trademark rights in the same word or phrase in different industries. Examples of this include Delta (for faucets and airlines) and Pioneer (for electronics and agricultural seeds). The question in these kinds of circumstances is often whether the goods or services offered by the two companies are sufficiently related such that a consumer would be likely to think a company providing the first product or service would be reasonably likely to provide the second product or service also. To take one of my examples above, it's unlikely that someone would think a seed company would also produce electronic equipment, so even though both companies use the same trademark, consumer confusion is unlikely and the two companies can coexist.
Turning to the specifics of your question, a first point is it doesn't matter the name of their company, just what term they are using as a trademark. So, if they sell their food product under the name "Sunny Florida," it doesn't matter from a trademark perspective if their actual company name is "Cloudy Maine." To determine whether there will be a potential conflict, you have to ask the question I indicated above: would it be reasonably likely that a customer would think the company providing the "Sunny Florida" food product would also be affiliated with your business? Here there's not enough information to know for sure, but I would at least be cautious. This is because it would probably be reasonable for a customer to expect that a food company would have a website, and it would be reasonable for them to add the word "online" to their trademark. So, even if consumers wouldn't be confused, it may be that the Sunny Florida food people might object.
I would add that if a trademark is merely descriptive of a product or its characteristics, the owner might not have acquired legal rights to exclude others from its use, even on similar products. If the other company's trademark was registered on the Supplemental Register, rather than the Principal Register, that indicates that the trademark office considered the term at the time to be descriptive of the goods, but potentially capable of becoming distinctive as to that company's product through ongoing use of the trademark and its association by the public with the particular product.
I just want to point out that there is no way to guarantee that you won't hit a road block in the application process. Responding to an Office Action based on likelihood of confusion is not something a layperson should take on. Please speak with a trademark attorney (many charge flat fees) before proceeding.
You have to consult with an attorney in your state. This is not because I am a NY attorney, but as you can see from the language on the site here, it says that no attorney-client privilege exists and that you should contact a lawyer in your state for representation. In other words, even if I were a lawyer in your state , the same rule would apply.
To find an attorney, go online to Martindale.com. This is a nationwide directory we lawyers use ourselves to find highly qualified legal specialists in various fields of law. These lawyers are NOT in Martindale because they paid to be included. They are there because they are rated as QUALIFIED by other lawyers in their field of expertise and geographic area as it applies to your kind of case. The process is this: other lawyers are asked to fill out questionnaires giving their opinion of the quality of the work of the law firm that ultimately appears in Martindale.
The site is organized geographically and by legal specialty. Consult with two or three and select the one you are most comfortable with. The Martindale listing will have the names of current or past clients. Contact those clients as references for the firm.
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have intended. Please do NOT press 1 or 2 since that will result in a negative rating for me which you may not If you want further information or clarification, just ask before you give a rating
I ask you to be fair in your rating. For instance, in these actual examples , the expert should not have received a negative rating:
a. A customer says "I ALREADY KNEW THAT".....but the expert didn't know what the customer knew or didn't know.
b. A customer wants to hear "YES YOU CAN".....but the certified legal expert says "LEGALLY NO YOU CAN'T".
c. The answer is short, but ACCURATE. A customer simply wants a longer answer.
Thank you for reading this and for your consideration. I'm always ready to help further.