Trademark Myths: How do I know if I have the right to use the name I chose?


A four-part myth-buster series

Welcome back. If you’re following my posts, you have determined now that company names, as well as names for products, services, etc., are protected by trademark law. You also know that merely registering with the Secretary of State is not enough to protect your name.

So how do you know if you have the right to use it? Here’s a hint – you need more than a Google search.

The answer is a fun and exciting process called clearance searches. Well, fun for trademark attorneys, probably less so for everyone else.

The purpose of clearance searches is to find existing trademarks to avoid “confusingly similar” marks, which are unregisterable. I thought the best way to explain this nuanced area of law would be to dispel a few trademark myths. So let’s get started with Myth #1 in this four-part series.

Myth #1: If I change one or two letters from a trademark that already exists, I can use it.

Trademark law evaluates confusing similarity across multiple categories – sight, sound, appearance, and meaning, to name a few. To take the example of my go-to coffee shop, STARBUQS is not available for use simply because you swapped out the CK for the Q to still achieve the same sound.

Likewise, if you used the same familiar green block lettering to spell out “TOM’S COFFEE” in front of your coffee shop or had clear plastic cups with the same green circular goddess logo, the marks are confusingly similar by way of appearance. This will also probably earn you a stern letter from the legal department at Starbucks.

Never mind that Starbucks is a famous trademark, which brings us to Myth #2 in my next post.

Sonia Lakhany is an intellectual property attorney at Lakhany Law, PC. She specializes in trademark and copyright law, teaches and is a frequent speaker and blogger. Sonia is also active on several boards and committees in the Atlanta legal community.

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