I started a new business a month ago. Today a received a cease and desist letter asking me to stop using the name. The name is a greek word.
We are in similar, but competing industries. (For example - one company makes motorcycles, the other cars. Similar but different at the same time)
Can I still see if I can trademark my name since the industries are not exactly the same?
Having received a cease and desist letter, you should consult with a trademark attorney in your area immediately. You should not take this matter lightly and should not take any action, i.e., filing your own trademark application, without first consulting with an attorney. You may actually end up doing more harm than good.
Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship. You should not rely on this answer to resolve your particular legal issue, since different laws are applicable in each jurisdiction, and each set of facts are specific to a particular situation. As with any legal question, you should consult with an attorney licensed in the appropriate jurisdiction to evaluate your particular legal problem following a comprehensive consultation and review of all the facts and documents.
I agree with my colleague and highly recommend you to consult with a trademark attorney in your area to determine (1) whether you infringe your competitor's trademark rights and (2) registrability of your name as a trademark.
The trademark application may be refused because of a likelihood of confusion. To determine whether there is likelihood of confusion, the PTO will look at different factors such as similarity of the marks, similarity of the goods and/or services, and similarity of trade channels for these goods and/or services. The marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. Similarity in any one of these elements may be sufficient to find a likelihood of confusion. The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.
Disclaimer: This answer should not be relied upon as legal advice. I am admitted in the States of New Jersey and New York and before the United States Patent and Trademark Office only. The response above does not form an attorney-client relationship, nor it is intended to be anything other than the educated opinion of the author. Consult an attorney in your geographic area before you act on any of this advice.
Business name the goods or services those names represent don't have to be exactly the same to constitute trademark infringement, they just need to be "confusing similar" to a consumer. In your example, there would be trademark infringement, because cars and motorcycles are in the same international class, and consumers would be likely to think that a company that makes one of those would also make the other, thus, confusion and mistaken identity bewteen the companies.
No one who's not a trademark lawyer has a good grasp of what "similar" means in terms of trademark infringement, and you certainly don't. You needed to see a TM lawyer BEFORE you chose this Greek word as your TM. See one now before you get further invested in a name you're likely to get sued if you keep using.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
There are too many imponderables in your situation to give you an answer and keep you away from trouble. You having received a C&D letter, my best advice is for you to consult a Trademark Attorney, such as myself ASAP.
A cease and desist letter is serious business. If you are sued for trademark infringement, you will be faced win budget-busting legal fees to defend yourself. It may not matter if your are in different industries. If there is even a small possibility that consumers might be confused, you could be liable for trademark infringement,
I constantly am amazed at how clients choose business names and trademarks without consulting with legal counsel. The choice of a name is one of the most important decisions anyone makes for a business---it is critical to branding and marketing success. Yet if a small business owner does not retain counsel to ascertain whether there are legal constraints on use of the name, the small business owner may wake up one morning and find that their entire branding/marketing strategy has gone down the drain. Any small business in any industry--and I do mean ANY, should retain corporate and IP counsel at a very early stage. Failure to do so will inevitably lead to costly mistakes. Indeed, one of the main reasons why such a high percentage of small businesses fail is that they do not budget and plan adequately for dealing with the legal and regulatory issues which they must confront.
This is a classic example of why it is essential to retain IP counsel before launching a small business. If you do not have sufficient resources to retain IP counsel and corporate counsel, then your business plan is fundamentally flawed. Most of the small companies I work with are astonished to find when I sit down with them how many important legal issues have been overlooked in planning the launch of their businesses. I soon become the "best friend" of these companies as I help then find ways to navigate through many difficult issues in an economically reasonable manner.
