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Thomas Swartz
Thomas Swartz, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3171
Experience:  Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
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Hi - if someone in the same broad industry of food has a label

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Hi - if someone in the same broad industry of food has a label "Legend of Sun Lion" and we have just "Sun Lion" how big a problem is that?

It is fairly significant. When it comes to trademarks being similar, the issue of whether or not trademark infringement occurs is whether or not there is likely to be consumer confusion as to the source of the goods represented by the similar marks. And a big part of this determination is whether or not the goods are in the same category of goods. If two food companies are using the same "Sun Lion" name, I would say that there is a pretty good likelihood that consumers would be confused about where the goods are coming from. So, if the other company has a registered trademark to "Legend of Sun Lion" and you are using "Sun Lion", I would say the other company has a good claim of trademark infringement. So, I would recommend dropping the "Sun Lion" name and choosing another name.

Customer: replied 4 years ago.

Understood. Dropping the name not so easy...we did a search and when we started they had not filed. We're in the food business - fresh citrus is a food and a hot sauce, also a food - but we wouldn't see any confusion in the marketplace. The fresh citrus is sold wholesale and then repacked on the retail shelf without brand....we're a hot sauce in the grocery aisle. Is that defensible? Thanks

In U.S. trademark law, it is the first person who uses a mark who has the right to the trademark. So, the fact that the other company had not filed for trademark registration at the time you started is not that important. If they were the first to use the name "Sun Lion" there could be infringement.

Is it defensible that they are in the wholesale citrus business and you are in the hot sauce business? Possibly. If the other company's name "Legend of Sun Lion" is not seen by the ultimate consumers of their product, then yes I would say you have a decent defense. As as mentioned, the whole issue is possible consumer confusion. And if consumers are not seeing their brand name, it would be hard for them to argue that there might be consumer confusion. And fresh citrus and hot sauces are also pretty far apart when it comes to food products. So, you could argue that there would be no confusion on this ground as well.

Ultimately, courts and juries decide these issues of consumer confusion, so nothing is guaranteed. But it does sound like you have decent defenses to a claim of infringement.

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