No Entitlement to Use Your Name for Your Business

Phil Davis – founder of Tungsten Branding – recently wrote an article for Forbes about why your last name may not be the best choice for the name of your business. The article identifies many problems with adopting your last name as your company name, but the one problem that recently was addressed by the Tradmeark Trial Appeal Board is that your name may be one of many similar last names. There is no right to use your name as a trademark if it is likely to cause confusion with another mark.

Doofood filed an application to register the mark DOOFOOD & Design for made-to-order meal kits. Doo is part of the Applicant’s name DooJin Kim. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark DO FOOD & Design for a prepared meal kit. The Trademark Trial and Appeal Board found that goods and services at issue were related and the design components of the marks at issue would likely be perceived as background to the literal elements of the marks. The use of pot design in the DOOFOOD & Design mark only reinforced the preparation of food.

Doofood did not offer any evidence of the conceptual weakness of the DO FOOD mark. Instead, it attempted to argue that the meanings of the marks were sufficiently different to avoid a likelihood of confusion. Dissimilarity of sound has trumped similarity in the appearance of the marks at issue. And dissimilarity of appearance has trumped similarity in sound before. But rarely if ever has dissimilarity in meaning trumped similarity as to sound and appearance.

Compounding Doofood’s problem was its lack of evidence on the difference in meanings. It appears that Doofood relied only on argument, which the Board held will never make up for a lack of evidence.

This case highlights that even your name needs to be searched before making the decision to adopt it as the name of your business.

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