Is this Oreo vs Oreos or can I still trademark?
April 4, 2010 12:52 PM   Subscribe

Trademark help: I am starting a kids' toy line called "Italian Girls" or "The Italian Girls" but "Italian Girl" is trademarked already in the same category. Am I screwed? (Note that my actual interest is not "Italian Girls" but another country.)

The LLC that filed the trademark did so as "Italian Girl, LLC" on June 3, 2009 but nothing further since then - Current Filing Basis 1B, Original Filing Basis 1B, nothing yet posted for opposition. Our logos are completely different, it's just that the category and desired usage is the same. AFAIK and can Google, they aren't doing anything with "Italian Girl" yet.

I have been working on a project for the past five years that will come to fruition this summer with the name "Italian Girls" and I will absolutely need to trademark it, and changing the name beyond adding "the" is NOT desirable.

Three Questions:
1) Can I trademark "Italian Girls" or "The Italian Girls" in the same category as something called "Italian Girl"?
2) How long do I have to wait to see if they abandon "Italian Girl"?
3) Am I just totally screwed?
posted by citystalk to Law & Government (10 answers total)
I do not see any trademark for Italian Girl at the USPTO. Is this a state trademark filing or incorporation?
posted by caddis at 1:06 PM on April 4, 2010

Hi! It's not really "Italian Girl" but something else...(I said that up top, sorry it got lost in the fray.)

Thanks for trying to help! Also, I will ask my trademark lawyer but he's $400/hour even for questions, and it's Sunday, and I would prefer to just hear from y'all first. :)
posted by citystalk at 1:09 PM on April 4, 2010

You really need to talk to an IP attorney about this. What you're asking for here is very specific legal advice that can't be given without getting all the facts.
Let me know if you need a referral in NYC.
posted by katemonster at 1:10 PM on April 4, 2010

IANYL. TINLA. I am guessing you'll have problems with this. From what you've said, they have an active registration, which they filed in the last 12 months, and they've registered a word mark that is identical to the name they are doing business under. That name is very similar, if not identical, to your desired word mark and is in the same class in which you'd like to register the mark.

You have options, which I'll let your lawyer tell you about, because he knows more about your business than we do, but absent something you haven't mentioned here, you are not going to be able to register this mark.
posted by devinemissk at 1:21 PM on April 4, 2010

If there is a registration for Italian Girl in the same category as you are seeking Italian Girls (hypothetically speaking), there is no chance of you getting your registration. It's just too close. You should check with your lawyer anyway but I can't see any facts which are going to help you get this registration.
posted by caddis at 1:23 PM on April 4, 2010

Thanks, y'all - I knew this, but was just freaking out - nothing like a casual weekend trademark search to dash dreams! I think there's a word or two that I can add to the beginning (like "Love those Italian Girls" hypothetically) to make it OK. Will be on phone with lawyer in morning to get on this! :)
posted by citystalk at 1:36 PM on April 4, 2010

Well, if "Italian" is code for "American," you'll be up against Mattel. A lot depends on the size and reach of your opponent.
posted by fourcheesemac at 1:39 PM on April 4, 2010

nope, not american, i'm not that crazy! :)
posted by citystalk at 2:05 PM on April 4, 2010

You could also go with "Girls of Italy" or make up a new word that you define to mean "Italian Girl" like "Italianas"
posted by mikepop at 5:56 AM on April 5, 2010

"it's just that the category and desired usage is the same"

Yeah, would be the problem.

Looks like you decided to go with an altered name, so good luck!
posted by ChurchHatesTucker at 6:55 PM on April 5, 2010

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