Conflicting Trademarks (Likelihood of Confusion)

[projectpaul]

What is the name of your state (only U.S. law)? Florida

So we applied for the trademark "Get Buzzed" under the class of energy drinks, vitamin drinks, etc....

The trademark didn't go through because another company owns the trademark for "ZZ Buzzed" and "Buzzed" under the same class so the trademark office claimed there was likelihood of confusion (I hate that term btw...I can see there being a "chance" of confusion, but I wouldn't say it's "likely").

Anyway, we filed an appeal but our evidence wasn't persuasive enough apparently. Among some of the things we argued were:

1.) Their "zz buzzed" trademark was a logo and artwork and the "z's" are facing backwards/mirrored images.

2.) Our beverage is clearly centered around the honeybee (ingredients, brand name, etc) and therefore our use of the word "buzzed" is distinct from theirs.

Regardless, our appeal didn't work and now we're thinking of contacting the owners of the "zz buzzed" and "buzzed" trademark to see if we can get their permission to use "Get Buzzed" as our slogan.

I guess our question is, assuming they're the nicest people alive and not someone looking to just get paid (which we wouldn't pay them anyway), what would they have to sign or fill out in order for the trademark office to see that we have permission to file for the "Get Buzzed" trademark?

Thanks for any help, we really appreciate it.

 

[justalayman]

The trademark didn't go through because another company owns the trademark for "ZZ Buzzed" and "Buzzed" under the same class so the trademark office claimed there was likelihood of confusion (I hate that term btw...I can see there being a "chance" of confusion, but I wouldn't say it's "likely").

maybe because the determination is based on the likelihood of confusion and not the chance of confusion. I agree with the USPTO.

but beyond that, "get buzzed" is already tm'd in the class of beverages and energy drinks.

http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:wz65uu.2.2

d artwork and the "z's" are facing backwards/mirrored images.

2.) Our beverage is clearly centered around the honeybee (ingredients, brand name, etc) and therefore our use of the word "buzzed" is distinct from theirs.

Regardless, our appeal didn't work and now we're thinking of contacting the owners of the "zz buzzed" and "buzzed" trademark to see if we can get their permission to use "Get Buzzed" as our slogan.

You might want to contact the owners of the TM "Get Buzzed" for permission.

I guess our question is, assuming they're the nicest people alive and not someone looking to just get paid (which we wouldn't pay them anyway), what would they have to sign or fill out in order for the trademark office to see that we have permission to file for the "Get Buzzed" trademark?

You cannot get the tm registered under your name if it is already registered under another's name regardless of what they permit. It is not up to the owner but the USPTO. They could license the use of the name, if they choose, but I suspect that is unlikely, especially without payment to them.

 

[projectpaul]

I think you may have misunderstood a little, probably my fault for not being clear...

That trademark for "Get Buzzed" is ours, but it isn't final yet because the USPTO claims there is likelihood of confusion with the people who own trademarks for "ZZ Buzzed" and "Buzzed" under the same class.

We need to contact the people who own "Zz Buzzed" and "Buzzed" to see if they don't mind us using "Get Buzzed", so we were wondering what kind of documents or whatnot they would need to fill out for that...

 

[quincy]

. . . That trademark for "Get Buzzed" is ours, but it isn't final yet because the USPTO claims there is likelihood of confusion with the people who own trademarks for "ZZ Buzzed" and "Buzzed" under the same class.

We need to contact the people who own "Zz Buzzed" and "Buzzed" to see if they don't mind us using "Get Buzzed", so we were wondering what kind of documents or whatnot they would need to fill out for that...

justalayman seems to have provided you with an answer to that question already (ie, license).

Like justalayman, however, I am not at all sure you will be able to get the ZZ Buzzed/Buzzed trademark holders to agree to let you use Get Buzzed. The whole purpose of a trademark is to distinguish one business or product or service from another. If a trademark owner were to freely allow others to use their mark, or a substantially similar one, they are likely to find themselves losing all rights they have in their mark. The mark would be considered abandoned.

That said, you could potentially try to get the ZZ Buzzed/Buzzed trademark owners to transfer ALL ownership in their marks to you through an assignment of rights, but if theirs is a thriving business, this is probably not something they would consider - and they almost certainly wouldn't consider it without cost to you.

Or, like justalayman suggested, you could possibly approach the trademark holders of ZZ Buzzed/Buzzed for a license to use "Get Buzzed." They would want any such license agreement drafted by an attorney so that their own trademark rights are not compromised. And any license they agree to should be a limited one and come with restrictions on your use of "Get Buzzed." You should not expect to get this license for free.

But, quite frankly, I do not see any company agreeing to give up their trademark or trademark protections to allow another company to use a confusingly similar mark, especially when the user of the confusingly similar mark is a competitor. There is nothing for the ZZ Buzzed/Buzzed trademark holders to gain with such a license agreement and everything for them to lose. Likewise, a transfer of all rights would only benefit them if they had near-future plans to abandon the mark anyway or you paid them handsomely for the mark, making it worthwhile for them to start their business anew with a different trademark.

I suggest instead of going after rights to Get Buzzed that you come up with a unique name to identify your product that will set it apart from all others. If you are intent on using "Get Buzzed," see an attorney in your area for your best chance of acquiring rights from the current holders of ZZ Buzzed and Buzzed.

Good luck.