Trademark Use question - same industry but different business - service vs goods

[jghworh]

What is the name of your state (only U.S. law)? Texas - need full North American, Asia and Europe protection eventually

Trademarks - I want to trademark a name in US and globally (with a unique logo) but have found this name has been used and is an active trademark in my same classification (Pet) category. My product is a hard-good and will sell in a retail setting. The current active trademark is a service business (veterinary services) and grooming; boarding. Do I have a chance at getting and protecting a trademark if my product is completely different than that of the active trademark holder?
Thank you!!

 

[quincy]

What is the name of your state (only U.S. law)? Texas - need full North American, Asia and Europe protection eventually

Trademarks - I want to trademark a name in US and globally (with a unique logo) but have found this name has been used and is an active trademark in my same classification (Pet) category. My product is a hard-good and will sell in a retail setting. The current active trademark is a service business (veterinary services) and grooming; boarding. Do I have a chance at getting and protecting a trademark if my product is completely different than that of the active trademark holder?
Thank you!!

Do you have a chance at using the same name for a trademark that is already in use in the same category as yours? Yes - but probably not a very good chance. I suspect your use would be challenged.

Is there any reason why you cannot come up with a name that is uniquely your own, for your own unique product? That is the best way to avoid any trademark issues from arising.

As to global protection, when you register your trademark through the USPTO, you have the ability to also register it in other countries at the same time.

I recommend you consult with an IP attorney in your area prior to investing a lot of time and money in a trademark that you may not be able to use. Whenever you start a new business, having an attorney review your plans prior to implementing them is wise and advised.

Good luck.

 

[jghworh]

Do you have a chance at using the same name for a trademark that is already in use in the same category as yours? Yes - but probably not a very good chance. I suspect your use would be challenged.

Is there any reason why you cannot come up with a name that is uniquely your own, for your own unique product? That is the best way to avoid any trademark issues from arising.

As to global protection, when you register your trademark through the USPTO, you have the ability to also register it in other countries at the same time.

I recommend you consult with an IP attorney in your area prior to investing a lot of time and money in a trademark that you may not be able to use. Whenever you start a new business, having an attorney review your plans prior to implementing them is wise and advised.

Good luck.

Thank you for your reply. I agree and usually refer to my creativity to make a unique brand or trademark, however, I own a similar trademark in the human market and wanted to keep it consistent with this theme, if possible. One additional question...I am a bit confused why the owner of the trademark has a "trademark" and not a "service" mark since their business is strictly a service business. I will read up more on the difference and specifics of each unless you have a quick explanation. Thank you again, I really appreciate the input!

 

[quincy]

Thank you for your reply. I agree and usually refer to my creativity to make a unique brand or trademark, however, I own a similar trademark in the human market and wanted to keep it consistent with this theme, if possible. One additional question...I am a bit confused why the owner of the trademark has a "trademark" and not a "service" mark since their business is strictly a service business. I will read up more on the difference and specifics of each unless you have a quick explanation. Thank you again, I really appreciate the input!

A trademark identifies a product or a service. Trademarks are the words, logos, signs, symbols, phrases, colors, shapes, et al that are used to distinguish one product or service from another.

There is little difference between a service mark and a trademark except in what they do - trademarks are used to promote products whereas service marks are used to promote services. There can also be an overlap if, for example, a service offers products. That said, in some states you may not be able to register a service mark, although federal registration can be available.

In your example, the pet service may decide to sell pet supplies (grooming supplies, shampoos) which could overlap with your pet products. There could be consumer confusion at that point, and infringement on the trademark rights of the pet service.

As a note, in the U.S. it is the first entity/individual to use a trademark (service mark) in commerce that/who will (generally) own the rights to the mark (this is very simplified and far more is involved ). In other countries, registration conveys ownership.

If you want to "keep a theme" by using the same name you have used in the past but that is already in use by another, I recommend you sit down with an IP attorney in your area to go over all facts.

Good luck.

 

[jghworh]

quincy
Your comments are very clear and I appreciate the input! I will obviously get my attorney involved and may even contact the owner of the trademark (legally and appropriately) to see if there is a personal or direct conflict. It may be worth it to spend a little money to get "my perfect trade name/logo" but will also evaluate and/or cut my losses and create a new option.
Your advice is invaluable and thanks for sharing your knowledge and advice with me in this forum!

Best,
jghworth

 

[quincy]

quincy
Your comments are very clear and I appreciate the input! I will obviously get my attorney involved and may even contact the owner of the trademark (legally and appropriately) to see if there is a personal or direct conflict. It may be worth it to spend a little money to get "my perfect trade name/logo" but will also evaluate and/or cut my losses and create a new option.
Your advice is invaluable and thanks for sharing your knowledge and advice with me in this forum!

Best,
jghworth

I suggest that if you do decide to contact the trademark holder and you find you can come to an amicable agreement, which allows for you to market your products under the same or a similar name that the current mark holder uses to market his services, that you get this agreement in writing. All terms of any agreement should be clearly and carefully spelled out so there can be no mistake as to the intent of the parties, and the agreement should be signed by all parties (and preferably reviewed by an attorney to ensure that all that needs to be covered is covered).

This will help to ensure that, should any dispute arise in the future over the dual uses of the trademark, the agreement can be used as legal support.

I think you are smart to get your attorney involved.

And thank you for the nice words. They are appreciated.