Discussion:
What is the name of your state?Nevada
Hi, I want to start a business in the next couple of months. The name of the firm, let's call it financial designer, is already trademarked by another VERY LARGE company. That company is not called "financial designer", but rather they have a software product called "financial designer" they use with their clients.
I want to call my business financial designer. My understanding is unless I'm misleading the public into thinking I am the other companies software product then I can use that name - is that correct? For example, I've also seen at that the term "financial consultant" and "investment advisor" are trademarked by large companies - however obviously MANY companies use those terms to refer to their financial consultants or investment advisors.
I actually am a "financial designer" of sorts and do financial planning and investment advisor services, however I don't use this other companies products and would not in any way attempt to confuse myself with this other company. So can I call my business "financial designer" if it is already trademarked by another company using that term to describe a software product they use in the financial designing process?
THANKS IN ADVANCE, for your time and consideration in answering my question.
Regards,
Answer:
My understanding is unless I'm misleading the public into thinking I am the other companies software product then I can use that name - is that correct? Not quite -- the test is "likelihood of confusion," which is different from misleading -- misleading implies some "intent" to mislead, where as "confusion" that results in infringement can occur even when the use is entirely innocent.
And it's more than just "using the other guy's product" -- it also covers situations where a consumer might believe that you are "sponsored" by the other company, or in any way "licensed" or "associated" with the other company -- it's not just product-based.
I actually am a "financial designer" of sorts and do financial planning and investment advisor services, however I don't use this other companies products and would not in any way attempt to confuse myself with this other company. So can I call my business "financial designer" if it is already trademarked by another company using that term to describe a software product they use in the financial designing process? Unfortunately, there is no cut-and-dried answer to this question. As noted in other posts, the test for "likelihood of confusion" consists of a number of parts (I think 9), and the court will balance those 9 factors to determine in confusion exists or not. The fact that the "consumers" of your services and the software product overlap, and that the fields of commerce overlap, definitely work against you. There may be other facts that tip the balance in your favor. You would be well advised to sit down with a local attorney who can review ALL of the actual facts inthis situation and advise you accordingly -- it's cheap insurance versus facing a possible infringement suit down the road.
Answer:
I just called an attorney - thanks for your advice!