How to reword to avoid likelihood of confusion?

[designer01]

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

After applying for a registration we received a refusal due to likelihood of confusion. I am unsure how I can make our description less broad so that it does not encompass the already registered trademark. Let me know if anyone has some ideas or if this is something I should contact a law firm with.

We are a web design company servicing B2B and B2C, we also provide graphic services to support the website and marketing efforts. Below is what we applied with and what is already out there.

Applicant’s services are design services, specifically: “Graphic design; Web site design consultancy;
Website design and development for others.”

Registrant’s services are design services, specifically: “Graphic art design for others; design for others in
the field of business forms, labels, tags, and other identification and promotional products namely,
clothing, corporate gifts, sporting goods, office accessories and other recognition awards; developing,
designing and maintaining websites for others featuring corporate promotional products.”

We are a very different companies and not even direct competitors. Please let me know if anyone has some creative ideas.

 

[Zigner]

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

After applying for a registration we received a refusal due to likelihood of confusion. I am unsure how I can make our description less broad so that it does not encompass the already registered trademark. Let me know if anyone has some ideas or if this is something I should contact a law firm with.

We are a web design company servicing B2B and B2C, we also provide graphic services to support the website and marketing efforts. Below is what we applied with and what is already out there.

Applicant’s services are design services, specifically: “Graphic design; Web site design consultancy;
Website design and development for others.”

Registrant’s services are design services, specifically: “Graphic art design for others; design for others in
the field of business forms, labels, tags, and other identification and promotional products namely,
clothing, corporate gifts, sporting goods, office accessories and other recognition awards; developing,
designing and maintaining websites for others featuring corporate promotional products.”

We are a very different companies and not even direct competitors. Please let me know if anyone has some creative ideas.

You could come up with a different name...

 

[quincy]

Zigner's suggestion is the one that makes the most sense.

There are only a limited number of goods and services (eleven classes of services) and the description of your services appears to be the same as the services offered by the company of the same name. I do not see how you can reword what you are offering to make the likelihood of confusion less so that your registration will be accepted.

When looking at likelihood of confusion, a trademark examiner focuses on several factors. Whether two businesses are competitors is just one factor. When the services (or goods) are related, and the names used to identify the services (or goods) are the same or similar, consumer confusion is likely.

You CAN review the facts and particulars of your preferred mark with an IP attorney in your area but I am not seeing that a change in the description of your services will result in a different outcome.

 

[quincy]

For the factors looked at when there is an appeal of the Trademark Office's refusal to register a mark, you can check out the following case, "In re E.I. DuPont deNemours & Co," 476 F.2d 1357 (CCPA 1973), available for reading through this link:
http://www.transjurlex.com/ustm/476f2d1357.htm

Again, from what you have posted here, Zigner's suggestion to choose a new name as an identifier for your web and graphic design company would be smart.

 

[designer01]

Thank you very much for all of the feedback, especially the speed of responses. I will work on altering the mark name since it doesn't look like there are any easy/possible solutions with the service description.

 

[quincy]

It appears from what you have posted that altering your mark, or choosing another one, is probably your best course of action.

Good luck, designer01. And Zigner and I thank you for the thanks.