software trademark name
Legal considerations when choosing a mobile app name
<p>We have written what I anticipate to be a fairly popular mobile app in the DIY mechanic category. We are in the alpha implementation/testing phase for google play, and discovered the name we chose for the app is the same as a drilling rig parts manufacturing company located in Texas. Aside from the domain name also being owned by that company (doesn't really matter to us), we are concerned with Trade Mark law.</p>

<p>The mobile app we are developing already has a large marketing channel with a certain amount of anticipated downloads immediate. We could change the name slightly (adding even one letter). Is this even necessary (or effective?) given that this company has no reason to develop a mobile app for public use, and is in a completely different state and industry?</p>

<p>More specifically, the scenario we are concerned with: Our app quickly gains popularity, google search results for the name bring up our app primarily (not the manufacturing company) - this WILL likely happen immediately. Manufacturing company notices and sues us for trade mark infringement?</p>

<p>There are basically two types of trademarks. State Trademarks and Federal Trademarks. State trademarks are only protected in the state where they're registered. They are cheaper than Federal Trademarks, but you probably wouldn't want to use on if you want your app to be on a larger scale.</p>

<p>What you want is the Federal Trademark. Federal Trademarks give you protection across the nation, and allow you more overall legal protection. The Federal Trademark is also divided by class number which specify the category the trademark is in (i.e. #162 Paper Making). Each Trademark must be registered in 1 or more classes.</p>

<p>-You can find more information about State and Federal Trademarks <a href="https://www.legalzoom.com/articles/state-trademark-or-federal-trademark-which-one-is-right-for-you" rel="nofollow noreferrer">HERE</a> </p>

<p>My recommendation to you is to first determine whether the Texan company holds a State or Federal Trademark (An easy way to tell is that if they have a 'TM' or 'R' next to their logo, it is federal). If they hold a state trademark, you are good to go. If not, you need to cross reference the class number you want, and the class numbers held by the Texans. If they don't overlap, you should be good. </p>

<p>-You can find a list class numbers <a href="https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm" rel="nofollow noreferrer">HERE</a></p>

<p>-You can check the on other company's trademarks <a href="http://tmsearch.uspto.gov/bin/gate.exe?f=tess&amp;state=4808:36ee50.1.1" rel="nofollow noreferrer">HERE</a></p>

<p>I helped found a company that had the same name as 3+ companies across the US. We have never had any issues with this at all. We actually once did a fun little marketing collaboration with another small business of the same name. That being said, having other entities with the name can make SEO very difficult and can really hurt web sales.</p>

<p>In the USA trademark rights arise from being the first to use a distinctive brand on particular goods or services in commerce.  They can be enforced in state or federal courts without any registration at all, depending upon how it is being infringed. </p>

<p>The use of an identical brand on goods in different classes is rarely a problem, let alone if they do not have overlapping markets. McDonald's was able to register its name for a restaurant even though McDonald's was already a US registered trademark in the field of plumbing and cooling.</p>

<p>If there is a "likelihood of confusion" of your brand with the other, then changing one letter or adding a word may not resolve the situation.  Trademark analysis is rife with gray areas not susceptible to abstractions.  Your attorney would need to look at all the facts and provide an opinion of your risks and options.</p>

<p>There is also no legal obligation to use tm or circle-R ® on trademarks, although it does provide the reader with notice of the proprietary claim. To "clear" a proposed trademark properly (i.e., determine whether your use would likely be legal) would require an opinion of legal counsel who has reviewed a comprehensive search of related literature, not just registration databases in your jurisdiction.</p>

<p>If you want to be really sure about your legal position, your attorney can (in theory) contact the earlier user of the similar brand and ask them permission to use yours in your field, and obtain a "concurrent use" agreement, spelling out your respective rights.</p>
