Startups Stack Exchange Archive

Trademark conflict

Assume trademark A is registered as a local (not covered by http://www.wipo.int/madrid/en/) trademark in the US. I have registered trademark A in an EU country. I presume I’ll run into problems down the road if I sell my product in the US (webservice), even if my trademark is registered in another country. Is that correct?

Answer 3498

TL;DR: Yes, that’s most likely correct.

I’m not completely sure what you mean by a “local trademark.” Do you mean a state trademark, or “local” to the federal United States?

Speaking federally, as is typically the case with web services, chances are, you wouldn’t want to come in with the same name.

Barring exceptions (which I’ll speak to next), you’ll be dealing with a whole new trademark, and all of the scrutiny involved in getting that.

#What are the exceptions?

There are a couple exceptions to that, but I don’t imagine either applies here.

  1. You did something with a treaty: If you were the first to file (as in, you filed yours before the US person filed theirs), and you filed with the Trademark Treaties, then you might be able to carry your trademark overseas and use it here. Of course, again, you’d have to have been first, and you’d have to have made that decision within the first six months or so of having your trademark.
  2. You’re famous: If you have a famous mark, you could hold some stake in it even if it wasn’t registered everywhere you intended to use it. Of course, that’s really for companies like Microsoft, NIKE, Sony, and other giants or “household names” like that, and they probably don’t have a lot of questions relating to Startups.

If their trademark is at a state level and you’re not looking to enter their state, ever, then it should be fine, although you probably won’t be able to get a federal trademark on top of theirs. I still wouldn’t suggest it, for sake of the (what I believe to be well-intentioned) spirit of the law, but you shouldn’t have any direct problems.

Of course, knowing whether you have any “direct problems” is really the job of a licensed attorney, and not some guy on the internet who’s three sentences of your situation, so if you plan on going for it, I’d suggest speaking with a professional and going over what your business is, what the competition’s is, and all that good stuff.

#A bit about trademarks…

In my opinion, trademarks are typically a force for good in the world (typically, I should say that again). If you find issue selling your product because of someone else’s trademark over which you have no claim, there’s probably a good reason for that.

The idea of trademarks is to protect consumers from confusion–if I see a logo or brand-name, I can comfortably expect a certain level of quality, for better or worse, from the product.

That speaks, by the way, to the goal of the second point above. If you live in a small country and you’ve heard all these good things about NIKE products and suddenly you see knockoffs of them coming into stores near you, you don’t want the real NIKE to be unable to then come in and set things right.

The conditions for trademark infringement are more or less this:

  1. Are the names/logos/sounds/colours/whatever the same?
  2. Are the business trades likely to be confused?
  3. Are they in the same place?

If you can say “no” to any of those, you’ll probably be fine.

As you see, part of the concern with trademarks is the industry they work in. If I wanted to get a trademark for “Sony lawn-chair repair,” I probably could. So if you’re being hindered by another company with your name doing something similar to you, there’s a good chance that you will be causing confusion, and that’s bad for your customers no matter what.

Assuming you do something better than your competition, be that better quality or pricing, you don’t want people being confused and going to the other place, finding it worse there, and never bothering to talk to you again.

So, ultimately, and again this certainly is not always going to be the case, it’s probably good to think twice before trying to find a way around someone else’s trademark.

#Is this all such a bad thing?

Speaking to your actual business problem rather than the trademark question you asked, I know the idea of being forced away from your own trademark is a frustrating one, but it might not be all bad. I would take the opportunity to set up a new company and website (you could use the same backend and just map some fields to different hosts if that’s easiest) that caters to the North American demographic more than yours does. In some cases, that will mean “Find and Replacing” all the “-ours” with “-ors,” in other cases, it may mean more.

It’s annoying to have to dilute your brand by having two names to it, but it’s not unheard-of. Most of your American networking will happen internally, and I suspect the same is true of the EU, so it’s probably not a huge issue if two more or less disjoint sets of your customer-base know you by two different names, particularly if you can then overcome the separation with more targeted marketing to each demographic.

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