trademark was rejected for being too close to something else; any possibility of still using it


2

I had a trademark application that was rejected. The company has a business in a specific part of the country (not what I'd be doing). Is there any chance of using this? Do people do trademark deals if they agree to be in different geographical parts?

edits:

1. this is in US

2. did use attorney

3. rejection had two issues: the first was that it was too broad and the second was that there was a similarly named company in the space. However, it was not identical (would be thought two different words in the dictionary) and a similar company got a different slight variation approved. It is a concatenation of two commonly used words.

Legal Trademark

asked Sep 1 '11 at 03:27
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Timpone
142 points

3 Answers


1

Is this in the U.S.? Did you do it by yourself or did you hire an attorney?

When you file a trademark application in the U.S., it is very common to get an initial rejection but that is not the end of the story. You have the opportunity to argue to the trademark office that the rejection was incorrect, and these arguments are often successful and you end up getting your trademark.

Perhaps your trademark application was too broad (in that you gave too broad a description of the goods and services associated with the trademark) and you might succeed if you narrowed your application.

EDIT:

Does the other company have a registered trademark? If not, then the fact that your are in separate geographic locations could protect you. For unregistered marks, you only have trademark rights in the areas where you use your trademark. You wouldn't need to make a deal.

If the other company has a registered mark, then that gives them nationwide rights. I don't recommend trying to make a deal as they will almost certainly say no. You could just start using your trademark and see what happens. The most likely worst situation is that they send you a C&D letter and you change your company name.

Why not reapply for your trademark with a narrower application?

Why are you asking these questions here instead of asking your trademark attorney?

answered Sep 2 '11 at 12:02
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Kekito
1,936 points
  • aren't trademarks national and doesn't the fact that these are domain names make the geographic issues somewhat mute? – Timpone 8 years ago
  • Common law trademarks (ie, unregistered trademarks) give you rights only in the geographic area where they are used. Registered trademarks are national. No, the fact that domain names are involved does not moot the issue, but it is a relevant factor to be considered among many. – Kekito 8 years ago

0

The issue is that your name is 'confusingly similar' with your competitor's. He got his, you won't get yours. It's not about nitpicking. It's that consumers, who are supposed to be protected in all of this, will be harmed by granting two people protection on such similar names.

Imagine I started a soft drink company with a product named 'koke' - think I would get the trademark registered? Think I should be able to?

You need a new name, mate!

You can keep using yours but since he's got protection and you don't, he may well come after you - with grounds.

answered Sep 24 '11 at 19:45
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John
1,194 points
  • yes and no, Coke is the strong trademark (although a reference to cocaine originally) and also a bad example since from 150 years ago when it was a LOT less crowded. I could probably get a trademark on something-cola etc... – Timpone 8 years ago

0

Depends on a bunch of variables including the nature of the business, personality of the owner, and long term plans.

You can always ask, and they can say no.

Meanwhile I believe it would be prudent to start rebranding yourself.

answered Sep 2 '11 at 06:29
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Joseph Barisonzi
12,141 points
  • looking into rebranding but this have a killer domain and a little depressed over the whole situation. Also, a little upset that my attorney spent a fair amount of time working on this and didn't get anything significant done. – Timpone 8 years ago

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