Similar names...will it be refused by USPTO

[Dia0625]

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


I have been using my company's name since the beginning of this year and am starting the process of getting it trademarked. However, I stumbled on another company that has a trademark registered that is similar to our company. They have registered a simple character mark, for example, as XXX Beauty where they list hair products, skin care products and make up as their goods. Our company's name is XXX Cosmetics. We sell makeup and skin care products. We want to register our logo which has our name in a stylized form with colors. Will my mark get refused because of this similarity?


I saw two other marks that used the exact same name and had basically the same products that were both registered. The only difference was one was a simple character mark and the other was the same word in a unique font and colored. So I'm wondering???

 

[FlyingRon]

First off, if you have been using your mark in commerce, it is already a trademark. What you are trying to obtain is registration and given the minimal description of things you have presented, you quite well could have it outright denied or protested by the competing mark.

 

[quincy]

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


I have been using my company's name since the beginning of this year and am starting the process of getting it trademarked. However, I stumbled on another company that has a trademark registered that is similar to our company. They have registered a simple character mark, for example, as XXX Beauty where they list hair products, skin care products and make up as their goods. Our company's name is XXX Cosmetics. We sell makeup and skin care products. We want to register our logo which has our name in a stylized form with colors. Will my mark get refused because of this similarity?


I saw two other marks that used the exact same name and had basically the same products that were both registered. The only difference was one was a simple character mark and the other was the same word in a unique font and colored. So I'm wondering???

Whether a trademark registration will be approved or denied is determined on a case-by-case basis after a thorough examination of the facts by a trademark examiner.

If someone has already registered a mark that is the same or similar to the one you want to register, the trademark examiner will look at, among many other factors, the goods or services being offered, the market for the goods or services, the appearance of the marks, and whether the new mark would be likely to confuse consumers as to the origin of the goods or services.

Here is a link to the USPTO and, available for free download, the Trademark Manual of Examining Procedure (TMEP), which shows what is considered by a trademark examiner when considering an application for registration of a trademark: https://www.uspto.gov/trademark/guides-and-manuals/tmep-april-2016

Some marks that are the same or similar can peacefully coexist in the marketplace. Others cannot. To avoid all risk of an infringement lawsuit, however, it is always best to research thoroughly the marks currently in existence and find something not already in use by another. You can have the specifics personally reviewed by an IP attorney in your area if you are intent on continuing use of your current mark. The attorney can outline for you the legal risks you face based on the specifics.

Good luck.