By Richard Stim, Attorney
While doing an Internet search, I found that another company is using the same name as my company's. I don't have a federally registered trademark, but I have used the same company name for years. My company, "Star Services," is a construction firm, providing general general contracting services to homeowners in Delaware. The other company, also "Star Services," sells telescopes in Alaska.
I've spent a lot of time and money on branding my company's name, including brochures, T-shirts, and billboards on the highway. It bothers me that another company stole it. Is this trademark infringement?
Companies' names are important. They serve as important marketing devices and statements of identity. Many companies, large and small, invest lots of time and money into marketing their names so that customers recognize and remember that name, even if the companies do not register their trademarks with the U.S. Patent and Trademark Office. The idea that another company is using "your" name can be deeply frustrating.
As a general rule, trademarks do not infringe one another if the underlying products or services of the two companies do not compete and are not distributed in the same trade channels or locations.
One of the primary aims of trademark law is to prevent consumer confusion. It would not serve the public good to allow two bakeries with the same name and logo to exist across the street from one another, since customers would not know which products come from which bakery. The bakery with delicious muffins might lose business to an identically named bakery with terrible muffins, because of consumer confusion.
However, if the two products are not related to one another and not likely to cause any confusion, then trademark law will not prevent the two companies from using the same name. Put differently, if the same name is registered in different trademark classes, this does not give rise to an infringement claim.
Here, you run a construction business in Delaware and the "other" Star Services sells telescopes in Alaska. No consumer is likely to be confused as to which is which. You each sell different products in different markets to different types of customers. Moreover, they sell products, whereas you sell services. It is very unlikely that your firm will lose business to the other firm, since no consumer would mistakenly wander into the Alaska telescope store looking for construction services.
Whether you do or do not have a federally registered trademark is not relevant, since neither state nor federal trademark law will be concerned if there is no risk of consumer confusion.
In short, both entities can coexist peacefully without any serious degree of consumer confusion. It would be difficult for you to show any actual damages as a result of the "other" Star Services.