QUESTION

Question about trademarks

Asked on Sep 14th, 2013 on Patents - California
More details to this question:
Someone has a trademark on the word I want but they have it in the category of clothing. I want to register the same name in the sunglasses category. Will the USPTO accept my trademark application?
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1 ANSWER

Intellectual Property Attorney serving Manchester, NH at Hayes Soloway P.C.
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As you may know, the US Trademark Office will permit separate businesses to own similar or identical word marks if there is enough difference in the goods so that consumers would not mistakenly believe the two businesses are related. One of the common examples is Delta Airlines and Delta Faucets. There are several factors they will review. For example, one factor is how distinctive the trademark is. Under this standard, Kodak would be considered more distinctive than International Business Machines and thus entitled to a broader scope of protection. Another is the exact scope of the goods. For example, the clothing company you identify in your question may have goods that indicate "clothing, namely men's socks," which would be relatively narrow scope of goods. Another factor would be whether companies that produce the Registrant's clothing frequently branch into sunglasses. If companies have expanded that way previously, consumers are more likely to think the Registrant branched that way and thus confuse your companies. Last, keep in mind that the trademark allowance standards are subjective. "Is the consumer likely to be confused" is a question that two experienced trademark attorneys can answer very differently. Thus, even if I had all the information about your mark and the clothing company, I may not be able to give you a more definitive answer than probably, maybe, or doubtful.  You can find those factors here: http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml#/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml Good luck.
Answered on Sep 16th, 2013 at 8:25 AM

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