Trademark New Company Name, Already TM'd

[C4talyst]

Jurisdiction

Virginia

I've encountered an incredible opportunity that involves starting a new company to take advantage of a contract. I've owned several businesses over the past 20 years, however, I've never had any significant issues with IP law.

For this new company, I've decided on a company name that everyone involved really likes. This exact name has been used by another company in the past, but they ceased using the name nearly 5 years ago, having merged into a new company with a new name. They are no longer using this name anywhere in commerce.

TESS is showing their current registration hit the 10-year mark in January of this year. We're in different states, they are in California, we're in Virginia. Our business models and types of services offered are completely different. Would it be safe for us to proceed with using this name? If yes, any additional advice? We'd definitely like to secure that trademark in the future, if possible.

 

[adjusterjack]

Would it be safe for us to proceed with using this name?

No, it's never safe to use a name belonging to someone else. Do you want to take the chance that you will lose every nickel of revenue in the inevitable lawsuit? Not to mention the tens of thousands you'll spend on attorney fees.

If yes, any additional advice? We'd definitely like to secure that trademark in the future, if possible.

Then call up the company and offer to buy it.

Otherwise, pick another name.

 

[C4talyst]

Thanks Jack. I've read varying opinions online, which is why I was driven to post here. I appreciate your feedback and think if I'm erring on the side of caution, yours is sound advice.

Their TM registation hit the 10-year mark this past January? Is there anything they should be doing at this point to maintain it? Can I expect it to possibly expire or go to dead status soon if nothing is being done to maintain? If we underwent limited operations under this name for the next 6-12 months, and were then able to secure a registered TM, given that their business has not engaged in commerce under that name for 5+ years, what kind of shape would we be in?

 

[adjusterjack]

This seems to be a common question on legal websites: "How do I infringe and get away with it."

My answer: No matter what precautions you take, nothing prevents the lawsuit from coming in the door.

My advice: Either buy the name or pick another. Or, you can roll the dice and take your chances.

Meantime, you would be wise to consult an IP attorney before you do anything.

 

[C4talyst]

Thanks Jack. I'm not necessarily wanting to infringe here. If this were an active company, engaged in business, I wouldn't give it a second thought and we'd move on. Given that they abandoned the name 5 years ago, let their domains expire, and social media accounts go dormant, I felt we had a chance to pursue using the name.

I've considered contacting the guy who still holds the trademark. He's worth tens of millions and I doubt he's going to want to let it go. I also thought our interaction may remind him to simply refresh everything having to do with the mark.

 

[C4talyst]

What about two companies in different industries having the same name trademarked? How common is that? As I said, we are two completely different business models.

You seem to have written off a lot of my questions as wanting simply to "infringe and get away with it", yet this doesn't seem to match with a lot of what I've read about trademark law.

 

[adjusterjack]

I doubt he's going to want to let it go. I also thought our interaction may remind him to simply refresh everything having to do with the mark.

Then pick another name. Cause those kinds of thoughts make you the bad guy here.

You seem to have written off a lot of my questions as wanting simply to "infringe and get away with it", yet this doesn't seem to match with a lot of what I've read about trademark law.

We get the same story about once a week here and, yes, it does boil down to wanting to infringe and get away with it.

If you want to play games with somebody else's TM, go right ahead. Your choice.

 

[C4talyst]

I certainly don't want to play with someone else's TM. I do understand where you're coming from. I'm just wondering why other legal articles mention trademarking the same names when you're in different business sectors, as though it's a relatively common path for some.

Like I said, if this was an active business, I'd have zero interest in pursuing any of this. They haven't used the name in commerce in at least five years. They let all their domains expire and their social media accounts are dormant. From what I've read, trademarks have to be maintained. This one certainly doesn't seem to meet any of the maintenance guidelines I've read about.

I'll definitely be consulting with an IP attorney before we proceed. I'd be perfectly happy if the TM expires and we can start using the name...and I don't think that makes me a bad guy in terms of standard business practices.

 

[Tax Counsel]

Would it be safe for us to proceed with using this name? If yes, any additional advice? We'd definitely like to secure that trademark in the future, if possible.

My view is a bit different than Jack's. Based solely on what you have said here, you might well be able to use that name without infringing on the other trademark. But before you do, I suggest that you run it by a trademark attorney to see what risks you run and whether there may be things about the mark that you don't know. Note that trademarks are established by the use of the mark in commerce, not by registration. Registration does have benefits, though, in enhancing your ability to enforce your mark.