Is my storage facility name too similar to a nearby facility?

[Josh Collins]

If an existing mini-storage facility is named Madison Storage and I open a maxistorage facility down the street and named it Madison Storage Garages (and the Secretary of State approved our business's name), can the existing facility sue me for having too similar of a name?  

Ok, I know anyone can sue anyone for anything, but do they have a leg to stand on.  They claim it is like naming a fast food restaurant McDonald's Burger Joint.  I also understand that McDonald's is trademarked and Madison Storage is not.  Any quick legal help would be wonderful.  I get to respond to a letter I received from their attorney and I'd like to know the correct questions to ask. 

Thanks in advance....

[John Franczyk]

I'm not a licensed attorney, but I do have experience in this sort of issue. The standard is whether a reasonable consumer is likely to be confused over the ownership of both of the storage units. If a consumer thinks that "Madison Storage" and "Madison Storage Garages" have the same progeny, you have no defense.

The secretary of state will allow any name that is not exactly like another name. You could name a corporation "Madison Storage 1" and the secretary would likely allow it. A corporation and and a trademark are related, but each has its own purpose.

Don't assume that Madison Storage does not have trademark rights just because it has not registered its trademark. Trademark rights develop when you use a name or logo in such a way that it identifies your goods or services. The registration is more procedural. It confers definite advantages and it does give a trademark owner a leg up in legal proceedings, but an unregistered trademark can confer rights upon its owner as well. Even if you don't have a trademark infringement problem, you may well have an "unfair competition" problem.  

Here's a few questions that I would ask:

- How long has "Madison Storage" been in business? The longer they've been in business under that name, the stronger their natural trademark rights will be.

- Has Madison Storage received any phone calls from customers who ask for "Madison Storage Garages"? That's evidence of actual confusion, which is a strong symbol of trademark infringement.

- Do Madison Storage and Madison Storage Garages look like similar or identical facilities? The more they look alike, the more likely it is that there will be an unfair competition problem.

The last issue here is that "Madison Storage" is a generic name for a storage facility that might be located in Madison. Accordingly, it is very difficult to claim trademark rights in that name. 

Trademark litigation can be expensive. You would be well served to spend an hour with an intellectual property attorney (you'll pay $300 - $500 for that privilege) to hash out the issues. If you're not locked into your name, you might try the gambit of asking Madison Storage to reimburse your expenses for changing your name. I know that sounds audacious, but it's not an unknown strategy.