Trademark registration and potential conflict
September 4, 2014 12:05 AM Subscribe
I have a name that is similar to another registered trademark - different services but similar in terms of spelling. Is this likely to be rejected?
I spent months trying to come up with a name for the product, and also a domain that was available (seems like every simple combination of words in the English language are already registered). I finally came upon the golden combo, registered the domain and even checked the USPTO and it wasn't registered.
I didn't check the box that included plurals in the name however, and now at the 11th hour - I've discovered that there is another name of a company in Singapore that has been trademarked - minus the 's'. Different service entirely with no chance of being confused, just the name.
Example: their name is "bak2u" and our name is "bak2us" (which isn't actually plural, but you can see how the search has returned this).
I'm wondering if the 'plural' in this case would be treated as an anomaly, and would not impact the registration process? The USPTO criteria is here.
I spent months trying to come up with a name for the product, and also a domain that was available (seems like every simple combination of words in the English language are already registered). I finally came upon the golden combo, registered the domain and even checked the USPTO and it wasn't registered.
I didn't check the box that included plurals in the name however, and now at the 11th hour - I've discovered that there is another name of a company in Singapore that has been trademarked - minus the 's'. Different service entirely with no chance of being confused, just the name.
Example: their name is "bak2u" and our name is "bak2us" (which isn't actually plural, but you can see how the search has returned this).
I'm wondering if the 'plural' in this case would be treated as an anomaly, and would not impact the registration process? The USPTO criteria is here.
IANAL, but I think you'll be fine.
My understanding is that non-confusion is easily established because each trademark is only registered in the classes of goods/service that apply to the business, so even if two trademark names were the same, you can still register it if you're using it in a different class.
As to the finer points of national vs international, or whether the other company might object, etc, that's for the lawyer. But I think you'll be fine.
posted by anonymisc at 10:51 AM on September 4, 2014 [1 favorite]
My understanding is that non-confusion is easily established because each trademark is only registered in the classes of goods/service that apply to the business, so even if two trademark names were the same, you can still register it if you're using it in a different class.
As to the finer points of national vs international, or whether the other company might object, etc, that's for the lawyer. But I think you'll be fine.
posted by anonymisc at 10:51 AM on September 4, 2014 [1 favorite]
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Not at all sure what you mean by this. "Anomaly" has no meaning in this context.
If the Examining Attorney finds your mark bak2us to be confusingly similar to the other mark bak2u, considering the respective services, geographical area, and other factors, then you will receive a communication from the USPTO rejecting your application, and inviting a response.
Then you will have the opportunity to respond, explaining why the marks are not confusingly similar, etc.
Since you're asking this, I'm assuming you haven't consulted an attorney yet. If the USPTO doesn't allow your application, find one. You will need competent help to prepare your response.
posted by JimN2TAW at 9:14 AM on September 4, 2014 [1 favorite]