Skip to main content
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.

Comments

Popular posts from this blog

Trademark International Class: Class 35 (Advertising and Business Services)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.
Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are n…

Trademark 101: State Trademark or Federal Trademark?

Now that you know what a trademark is, what a trademark isn’t, and that you should get a trademark, let’s explore if a State trademark or Federal trademark is most appropriate for your needs.
For the USA, trademarks can be obtained either at the State level or the Federal level. So, which do you need? I’ll explain both and that’ll give you a clearer picture as where to go from here.
First and foremost, a State trademark gives you trademark protection for that specific state whereas a Federal trademark gives you trademark protection nationwide. Simple enough, yes? But, which is the right trademark for your needs?
1)Are you actively in business? 2)Are you only doing business in one city or county or just statewide?
If you answered yes to both, then exploring a State trademark is your next step. Here are some advantages to a State trademark:
·The right to expand statewide. The name will be waiting for you in other metros. ·If another mark is infringing upon yours within the state, you’ll have a…

Trademark 101: Should You Trademark?

Now that we know what a trademark is and is not, let’s dive into the next logical question: should you trademark?
The easiest way to answer this question is to look at your business and your plans for it.
-Is the name, logo, or slogan an integral part of your business? -Are you doing business on a statewide or nationwide or international level? If you’re only doing business citywide or countywide, do you see potential for geographical growth? -Would another business in your industry using the same or similar name hurt your business? In other words, is it possible you’d lose customers if someone had the same or similar name in your industry?
If you answered yes to any of the above then exploring a trademark is the way to go.
Here’s what a US Federal trademark gives you:
·A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights…