Trademark a phrase similar to an existing trademark?

Question

I am thinking about applying a trademark for my product name. The name contains two words, say "WordA WordB". I searched US patent and trademark website and found an existing trademark, the phrase is "WordB-WordA". So basically the reverse order of my two words with a dash. The description of the trademark and business industry is completely different than mine. There is definitely no similarity of the purpose of the phrase. Under such circumstances, do you think I can get mine registered? Thanks a ton!

Answer 1

Without knowing exact details, it's going to be impossible to point you in the proper direction. I suggest contacting a trademark research company or a trademark attorney. Contacting the USPTO office, as someone else suggested, will, honestly, get you nowhere. They will not assist you in that capacity at all.

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

Here's what the USPTO has to say about this matter:

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

It's best to contact a private search company or a trademark attorney to assist you in determining if this will be a problem or not.

And, even if it's clear on the USPTO site does NOT mean that the phrase/slogan is legally available. That site scratches the surface of what's out there. Also, if you're not familiar with the process, it's easy to over-react or under-react to marks you find.

Hope that helps! I wish you much success & happiness in all your ventures!

Answer 2

Only two of your links worked. The send and last one worked, the others did not. FYI. Interesting. I guess, if they actually have it trademarked, then the coffe shop broke the law. I didn't know that churches were in the business of trademarking things. What interests me is that the church would trademark something. Churches are non-profit. People/ companies get trademarks so people cannot make money off the ideas they are using to make money. Since churches are non-profit, why would they care. And they wonder why I don't believe churched should be tax exempt anymore.

Answer 3

I believe you can since it is in a different order of the existing trademark. But then again I have seen where the other company sued another company for infringement of the trademark stating it might confuse consumers. You really want to contact the trademark/patent office and ask them this question before you start spending money and then it will be a lost.

Answer 4

TM Express' answer is right on the mark (no pun intended). I would like to add that even if the PTO accepts your mark to be registered, you still have the other party to deal with. They may object to your use and send you a cease and desist letter. They could also oppose opposition to the registration of the mark after your park becomes "published for opposition."

Answer 5

If the business is totally different they might let it through, but sounds like a real problem area to me. If you're willing to pay for the chance then go for it. But I would suggest trying for a new name.