QUESTION
Should I fight the refusal of my trademark? Or try to come up with a new name?
Asked on Feb 08th, 2014 on Intellectual Property - Colorado
More details to this question:
I filed for a trademark that recently was refused due to likelihood of confusion with another mark. Here is an example of how similar the names are (or are not), I filed for something like Kaitlyn Brown Sport and the cause of the refusal was something like Kathy F Browns. So semi-similar, yes, but seems a little extreme to me, especially with mine having that extra word on the end. The class is the same, clothing, and the goods and services are very different. What I need to know is should I just go through the motions of responding until I get it? Or do I need to go for another trademark altogether? Also, could it be possible that by using a service like legal zoom my application was poorly done? Any insight is greatly appreciated.
1 ANSWER
Intellectual Property Attorney serving Manchester, NH
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Hayes Soloway P.C.
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It is always possible that using a service like legal zoom your application was poorly done.
'Sport' is a relatively generic term in apparel and arguing about it is unlikely to move the argument in your favor, in my opinion. If Blockbuster were still alive and you tried to register Blockbuster Video Rental, you would have no chance for the same reason. The concern the USPTO has is that casual shoppers who like Kathy F Browns may not remember that name clearly, will see your brand, and think they are just recalling the name incorrectly. Attempting to overcome a likelihood of confusion rejection in this situation is unlikely to yield success (<50% IMO).
If you wish to persist, there is a helpful 7th Circuit case that suggests common surnames like Jackson, Smith [or Brown] are sufficiently common that consumers will not be confused to think that two goods bearing the same common surname come from the same source. Search Peaceable Planet Inc. v. Ty Inc.
Good luck,
Todd
Answered on Feb 11th, 2014 at 11:19 AM