why you should do a trademark clearance - tiffany's versus tiffany's

When starting a new business, launching a new product or even shortening a previous business/product name, you should always do a trademark clearance search in order to “clear” the proposed mark.

The goal is to ensure that the mark you are considering for use is not “confusingly similar” to a mark used by another for similar goods/services.  Obtaining a competent opinion up front can save you a lot of time, frustration and money (for changing everything later).

A good cautionary tale comes from Diamonds.net about the recent lawsuit brought by Tiffany & Co. against Tiffany’s Restaurant (U.S. District Court for the District of New Jersey ::: 05-cv-05074-DMC-MF TIFFANY AND COMPANY et al v. ROMANELLI et al – complaint PDF - 577 KB).

The lawsuit, filed at a federal court in New Jersey, claims that Tony Siragusa, a former NFL lineman, and his business partners are seeking to create a restaurant empire based on the Tiffany’s name.

"Tiffany jewelry is well known, and it's not like you're going to drive by our restaurant, think it's owned by Tiffany jewelers, and say this is where I'm going to buy a watch," Siragusa told The Star-Ledger of Newark.

As Tony went on to comment – no one is going to push him around!  What he doesn’t realize, however, is that the mark “Tiffany’s” is arguably a famous mark and will be given significant scope and latitude with respect to prospective infringers.  Is it likely that consumers might be confused – you never know.  With the trend for brand expansion into restaurants and eateries, it is at least plausible that Tiffany & Co. may or could expand into the restaurant business.

It is a classic struggle — diamonds versus clams Di Napoli.