Can I Be Sued for Trade Name Infringement?

Full question:

relative to Intellectual property: We started a weight loss center the first of last year. Our business name is Advance HCG Diet Center. So we now have received a letter from 'The Diet Center' telling us that we cant use 'Diet Center' in our name. Is that correct?

• Category: Intellectual Property
• Date: 04/07/2025
• State: Washington

Answer:

Infringement of a trademark, trade name, or trade dress involves use of one by the infringer that is the same as that of the owner or so similar that it is likely to deceive or to cause confusion or mistake on the part of the average purchaser. Trademarks identify the goods of one manufacturer from the goods of others. Trademarks are important business assets because they allow companies to establish their products' reputation without having to worry that an inferior product will diminish their reputation or profit by deceiving the consumer. Trademarks include words, names, symbols and logos. The intent of trademark law is to prevent consumer confusion about the origin of a product.

Trade names are names associated with a business and its reputation. Business names are not by themselves a trademark. The name that a business uses to identify itself is called a "trade name." This is the name used on its stock certificates, bank accounts, invoices and letterhead. The business name may be given some protection under state and local corporate/LLC or fictitious business name registration laws (or protected under federal and state unfair competition laws against a confusing use by a competing business), but it is not considered a trademark or entitled to protection under trademark laws unless it is affixed to a product or service. However, if a business uses its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection if it is distinctive enough. For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products.

A second-comer needs to take care to distinguish their product if they are using a name similar to a predecessor, especially in a competing product or service. Also, a generic term may acquire a preferential right to the use of such a name or word under the doctrine of secondary meaning. In such a case, a duty may be imposed upon a subsequent user to take such precautions as may be necessary to distinguish or identify his goods or business and thus avoid confusion on the part of customers or patrons.

In determining whether relief for unfair competition will be granted, some of the factors considered are the distinctiveness of the name, the similarity or relationship between the subjects involved, whether the goods or services are furnished to different classes of customers, and whether motives of fraud or bad faith intent were involved. Although the ultimate issue is whether the defendant's use of the complaining party's name or symbols results in a confusion as to the source or origin of the goods or services involved, courts will consider:

1.strength of plaintiff's name;
2.relatedness of goods;
3.similarity of names;
4.evidence of actual confusion;
5.marketing channels;
6.degree of purchaser care;
7.defendant's intent in selecting name;
8.likelihood of expansion of product lines.