Same Name, Different Business? What You Need to Know About Trademark Conflicts

Choosing a great business name or logo is one of the most exciting parts of launching a new venture. But before you invest in branding, signage, websites, or marketing, it’s critical to make sure your name won’t create legal problems. Just because no one has exactly the same name doesn’t mean you’re in the clear. Here’s what business owners need to know about trademarks, confusing similarities, and protecting their brands the right way.

Basic Trademark Principles:

• A trademark protects names, logos, slogans, and other branding elements that identify and distinguish a business’s products or services.
  Common law trademark rights are based on first use in commerce and distinctiveness and can be reinforced with state or federal registration.
• The main test: Likelihood of Confusion — would an ordinary consumer reasonably think two brands are connected? This looks at a variety of factors such as a comparison of the marks, the commercial impression each makes and the relatedness of the two businesses/industries.

What “Confusingly Similar” Means:

• It’s not about exact matches — it’s about whether your name/logo looks, sounds, or feels similar enough to confuse customers. When encountering the mark, would a potential customer be confused and think the product or service came from the other business?
• Trademarks are evaluated based on:
  • Sight: Does the name or logo look similar?
  • Sound: Does it sound similar when spoken aloud?
  • Meaning/Impression: Does it give a similar feel or idea?
• Example:
  • “Suntech” and “SunTek” could be confusingly similar for solar panels because they are directly competitive products in same industry and the names sound alike when pronounced aloud.
  • “Big Apple” for a grocery vs. “Big Apple” for a tech company might not be because the business industries are not related and consumer are unlikely to assume the same business is in both industry categories.

Goods and Services Classes Matter:

• Trademarks are categorized into 45 different classes based on goods/services.
• Same name or mark in different industries may be allowed.
• Example:
  • “Delta” for airlines vs. “Delta” for faucets — both coexist legally!
  • Nine Lives used with cat food by Purina and for batteries by Eveready— both coexist legally!
  • United” for airlines vs. “United” for auto repair services could also co-exist.

If the industries are different enough and customers wouldn’t expect a connection, it may not be confusing. However, if the industries are related — like food and beverage, or clothing and shoes — similar names are riskier.

Changing Spelling or Spacing Isn’t Enough:

Many business owners think they can avoid trademark issues by slightly altering a name. Unfortunately, this usually doesn’t work.

• Minor tweaks don’t avoid infringement if the sound or overall impression is the same.
• Examples:
  • “Kool Kars” vs. “Cool Cars” — likely confusingly similar.
  • “QwikMart” vs. “QuickMart” — likely confusingly similar.
  • “BeeZ Coffee” vs. “Bee’s Coffee” — risky, especially if pronunciation is similar.

Key Point: Sound and commercial impression matter more than creative spelling!

Foreign Marks and U.S. Protection:

If a company is using a name in another country, that foreign use generally doesn’t block U.S. trademark rights unless they have filed or used the mark in the U.S. This can create opportunities where a famous brand overseas may not have U.S. rights if they haven’t entered the U.S. market.

• Foreign registrations don’t automatically protect the brand in the U.S. A foreign trademark owner can sometimes claim protection under international treaties — but it’s not automatic.
• A business overseas may have rights there, but you may still be able to register/use a similar mark in the U.S. — if no conflict exists here.

Important: Always conduct a U.S. clearance search even if you think a name is only used abroad.

When a State Trademark May Be a Better Option:

• Federal registration is ideal, but sometimes a New York State Trademark is a smart move:
  • Industries like cannabis dispensaries, cultivators and processors that are federally prohibited from registering federal trademarks for their products and services but can obtain state marks because their business is legal under state law
  • Small, local businesses not selling outside New York that don’t qualify as being in interstate commerce.
  • Quicker and less expensive than federal filings, lower level of review during the process.
  • Can only be filed after the mark is in actual use in commerce as state law does not allow “intent to use” filing basis.
  • Protects your rights statewide.

Benefits of NY State Registration:

• Official public record of your rights in New York.
• Legal protection within the state.
• Useful leverage if a local competitor uses a confusingly similar name.

Examples:

• A single-location restaurant, bar, or boutique.
• A regional service provider like a plumber, contractor, or consultant.

Before you print business cards or launch your website, protect your future.

Choosing a name is more than a creative decision — it’s a business risk and an asset that needs protection. Before you invest in branding, business cards, signage, or websites, protect your future.

✅ Conduct a proper name and logo clearance search.
✅ Understand how confusing similarity and classes apply to your business.
✅ File the right trademark — state or federal — to lock in your rights.

📧Ready to protect your brand?
Contact Attorney Tracy Jong at [email protected] for a trademark consultation today!

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