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  1. #1

    Default When Can You Use an Existing Name For a Different Product or Service

    According to a basic trademark search, it appears the word is taken but "technically", it's "SmallBiz Payroll."

    That may be a very stupid question but I'm 100% unsure about this stuff. I plan on using a service like LegalZoom anyway to do this stuff for me (unless people here would recommend something better). I'm a software developer, definitely not educated on law in any sense except unfortunate prior experience with the criminal side.

    Is it important that it uses both words? Also, it appears that it's a payroll service and not software. I remember reading something a long time ago that it only matters if the trademark is in the same industry as yours. Is this true? Since mine is software, and theirs is a service, and my software (small business management software) isn't exactly related to just payroll?

  2. #2
    Join Date
    Feb 2011
    Posts
    131

    Default Re: "Smallbiz": Am I Able to Use This As a Software Product Name

    There are not absolutely fixed rules about this: If it comes down to opposition or cancellation proceedings if you try to register the mark, the so-called "Du Pont" factors would apply to a determination of likelihood of confusion.

    But the general idea is that you want to find a mark (before you have put a lot of money into promoting it) that does not even remotely look like someone elses's mark and that is NOT merely generic or descriptive. You want to find a mark that is either suggestive with some mental work (like "Coppertone") or arbitrary (like "Camel" for cigarettes) or fanciful (like "Exxon" for petroleum services and products).

    Marks are also separated by classes, i.e. a mark that would be confusing with another mark could be OK if one is only in the area of paper services and the other is only in the area of wine. But that's also not a hard and fast rule. Wine and beer are in different classes, for instance, but there is some recent case law that it's not enough of a separation for very similar marks.

    I would stay away from SmallBiz (there really could be likelihood of confusion) and find something absolutely unique. Why take on the possibility of trouble?

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