Thursday, January 08, 2009

How many names should I trademark?


A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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

3 comments:

Joffery Stark said...
This comment has been removed by a blog administrator.
ROSHNI BISHT said...

Hi I am trying to get a trademark for swishartsandcrafts.com and I have been told that it's not possible to get swish because it's taken by some jeans company. I want to know why can't I get a trademark for my company where as swish jeans is different and mine is siwshartsandcratfs.com . I am totally confused now.

Shannon Moore said...

Hi Roshni Bisht,

Thank you for your comment and for reading! We'll need further information before we can point you in the right direction. You are right that it's NOT just the name when determining if marks are too similar but also their goods/services. However, each situation varies so it's best if we chat about the specifics before helping you determine your next best steps. Please contact us at 800-776-0530 or via email staff at tmexpress dot com

Thank you!

Best,
Shannon