Friday, July 07, 2006

Trademark Info: Trademarks – What is a Conflict? What is a Strong Similarity?

Comprehensive trademark research consists of several layers:

  • Researching comprehensive databases, such as Lexis-Nexis or Dialog

  • Looking for similarities, such as synonyms, word placement & spelling variations

  • Consultation with a trademark attorney if Conflicts or Strong Similarities arise

The hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.

First, let's discuss the difference between conflicts and strong similarities.

What is a Conflict?

Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.

What is a Strong Similarity?

These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning to be confusingly similar to the average consumer. Here are some examples to aid you:

  • Joe has a pending Federal trademark for his auto detailing service called It's in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance and Joe's pending Federal application.


  • Mary has a Federally registered trademark for her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary's Federal registration.
  • Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.
  • Lorena's online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

Naturally, there will be exceptions to every situation. For instance, similar trademarks (in name and goods/services) can coexist peacefully if both parties are comfortable with one another’s existence. This can happen if trade areas do not cross (e.g. located on opposite coasts), if they appeal to different consumers (e.g. one sells to private industry while the other sells to the general public), etc.

*No claim is made to the ownership, knowledge or liability of the above personal and/or company names. The above examples are merely for informational purposes and should only be seen as such.

No comments: