FAMOUS TRADEMARKS

Trademarks that are famous are afforded slightly different protection based on the very nature of their recognizability. Simply, the argument for famous marks is that since their brand name is recognized by a vast majority of consumers, any marks similar to it, even in different industries, could be construed as an infringement. The main justification for this is if "the owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." Of course, like with all trademark issues, there are gray areas. Each potential infringement is taken on a case by case basis. Not all cases end up favoring large corporations either. Take the famous case of Victor's Secret & Victoria's Secret (Moseley et. al. d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al.), in which the smaller company won their case. The best route to take if there is a possibility of an infringement, famous mark or not, is to speak to a trademark attorney. She will assist you in determining what the next best step is as well as offer assistance with any preparation and filing of documents.
While trademark law can be intimidating to the uninitiated, obtaining the help of a trademark attorney or an experienced private company will make the entire process go much smoother. There are preliminary steps one can do when starting a business and/or renaming a business: Choose a name that is unique & distinctive - generic or descriptive names are not generally allowed registration by the USPTO and are more difficult to enforce. Do as much free research as you can before hiring an attorney or a private company. Check the internet, yellow pages, domain names & the USPTO. Be aware that any research you do for free online is merely preliminary and only comprehensive research will tell if the name is available.