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A Trademark question

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  • A Trademark question

    Hello all,
    I have a product I want to start marketing and I want to register the
    product's name as a trademark in the U.S.
    I did a trademark search and found that the name is already registered
    as a trademark - but under a different class.
    To be more specific, I want to register my name under 'clothing' and
    the name is already registered under 'paper goods and printed matter'.
    What does that mean ?
    Can I still register that name under the different class ?
    Would the company which registered that name first be able to prevent
    me from registering the same name under a different class ?
    What should I do ?
    Thanks,


  • #2
    A Trademark question

    Avichay wrote:
    I have a product I want to start marketing and I want to register the product's name as a trademark in the U.S. I did a trademark search and found that the name is already registered as a trademark - but under a different class. To be more specific, I want to register my name under 'clothing' and the name is already registered under 'paper goods and printed matter'. What does that mean ?
    I am not a lawyer, here is my opinion.

    When a party has a particular mark, they must define the 'classes' of
    goods and / or services to which the mark has been used upon (or with)
    that they are registering, as they have to pay a separate fee for each
    class, if memory serves me correctly.

    If the mark is considered a 'strong' mark, generally a coined or
    artificial word made up for that purpose, or a phrase which they have
    created, the mark will be considered protected against use on other goods
    or services even if they do not make that product or sell it.

    What the courts look at is risk of confusion of source, will the usual
    buyer of that product or service mistake the original registrant with the
    one having the new registration and/or use.

    For example, the word 'Acme' is considered a 'weak' mark. Unless you're
    selling something in direct competition with someone else using that word,
    a court will in most cases not prevent you from using it on something
    else, and you could probably register the name for that particular class
    of goods. But again, all you will get is protection for whatever you are
    selling, and nothing else.

    Now, if you tried to sell *anything* under a name like Kodak, FedEx,
    Exxon, New York Times, or IBM, the owner of that mark could very easily
    stop you from doing so in court, and probably prevent a registration or
    have it canceled. Those marks are very strong.

    You also have the marks where the owner is extremely vigorous in defending
    their mark, win or lose. 'Toro' - the lawnmower brand - is one such
    company, unless you plan to fight you generally do not want to use that
    word for anything. I understand they are very zealous, and while
    sometimes they lose, they do fight hard.

    Then you have the ones in between, in which the 'strength' of the mark
    depends on how close the two products are in terms of functionality and
    possibility of confusion.

    For example, if you wanted to sell *any* form of liquid for human
    consumption under the name "Coke" it would be inadvisable as it is quite
    likely that Coca-Cola could get a restraining order. If you were
    developing a type of motor oil, you might get away with it. If your name
    were Robert Coke, and you tried to sell oil under that name, and included
    a disclaimer, you might - or might not - be able to do that and win a
    lawsuit if sued. But if you were making an artificial coal product and
    using the word "Coke" in it, I think the courts would be less likely to
    rule against you since the term 'coke' is generic for a product used in
    connection with coal and steel manufacture, so you could probably get away
    with it.
    Can I still register that name under the different class ?
    I believe you can register. But the other company can petition for
    cancellation or refusal, or sue.
    Would the company which registered that name first be able to prevent me from registering the same name under a different class ?
    Yes. They can file a petition with the U.S. Patent and Trademark Office
    to cancel your registration if they think it's worth it. As it only costs
    $200 to do this it's not very expensive. Then the PTO review board makes
    a decision.
    What should I do ?
    Talk to a lawyer specializing in trademark law.

    --
    Paul Robinson "Above all else... We shall go on..."
    "...And continue!"
    "If the lessons of history teach us anything it is
    that nobody learns the lessons that history teaches us."

    Comment

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