Word inversion conflict in trademark - please help!

[Chilldude10]

We've been in commerce for 6 years selling our products all over. I'll use a similar brand in my question ("smart juice") as an EXAMPLE ONLY to protect everyone's privacy. Nonetheless, the circumstances and dillemas we're facing are similar

We've recently filed a trademark for "smart juice". We learned that there's another company in commerce called "juice smart" and our application was rejected due to possible public confusion.

They strictly produce industrial raw materials to other factories in large volumes, while we sell finished products fornretail/wholesale industries; although no confusion is really possible in the real world, in practice, we both share the same filing classification. Even if their potential customers have reached to us or vice versa, there's no product we can offer to them.

We learned the word inversion is acceptable only if the meaning of the word has changed to due to inversion. We believe that both trademarks are NOT synonymous even though they sound similar.

Juice smart=street smart=book smart (who's smart? The person/The company (who'd gained knowledge of juice from experience)

Smart juice=juice that's smart=adjective (the product is smart/clever due to its unique cheractrisitcs)

do you agree the word inversion in this case carry a different meaning? Any successful word inversion cases u can point to? How would you go about responding to their rejection?

We are located at the state of NY.

Thanks a lot for your help!

 

[quincy]

We've been in commerce for 6 years selling our products all over. I'll use a similar brand in my question ("smart juice") as an EXAMPLE ONLY to protect everyone's privacy. Nonetheless, the circumstances and dillemas we're facing are similar

We've recently filed a trademark for "smart juice". We learned that there's another company in commerce called "juice smart" and our application was rejected due to possible public confusion.

They strictly produce industrial raw materials to other factories in large volumes, while we sell finished products fornretail/wholesale industries; although no confusion is really possible in reality, in practice, we both share the same filing classification

We learned the word inversion is acceptable only if the me sing of the word has changed to due to inversion. We believe that both trademarks are NOT synonymous even though they sound similar.

Juice smart=street smart=book smart (who's smart? The person ( knowledge of juice from experience)

Smart juice=juice that's smart=adjective (the product is smart/clever due to its unique cheractrisitcs)

do you agree the word inversion in this case carry a different meaning? Any successful word inversion cases u can point to? How would you go about responding to their rejection?

Thanks a lot for your help!

I believe that, if the trademark examiners found that consumers could be confused by the similarity in the marks (and this includes not only similar in meaning but in sound and appearance), your likelihood of succeeding with a challenge to the rejection is slim.

I find Juice Smart and Smart Juice to be confusingly similar, as a note.

What is the name of your state, Chilldude10, or, if not in the US, what is the name of your country?

 

[quincy]

We've been in commerce for 6 years selling our products all over. ...

... our application was rejected due to possible public confusion.

... we both share the same filing classification. Even if their potential customers have reached to us or vice versa, there's no product we can offer to them.

... Any successful word inversion cases u can point to? How would you go about responding to their rejection?

We are located at the state of NY.

Thank you for editing your original post to add your state name, Chilldude10.

If you wish to challenge the rejection, you will have your arguments for the registrability of your mark heard before the Trademark Trial and Appeal Board - the Trademark Commissioner, the Deputy Commissioner, assistant commissioners and members of the Board appointed by the Trademark Commissioner.

Because we cannot do personal reviews on this site, I recommend you have the actual trademarks in question personally reviewed by a trademark attorney in your area, to better assess your chances of successfully challenging the rejection of your mark by the trademark examiner.

Although not an inversion, there was a case recently heard by the Trademark Board that was decided in favor of the challenger, after the Board assessed the marks in question on the same factors that will be used in deciding the similarity between the registered trademark in your case, and your inverted mark. The dispute was over the VOLVO mark and Hebei Aulion's LOVOL, Volvo Trademark Holding AB v. Hebei Aulion Heavy Industries Co., Ltd, Opposition No. 91178281, http://ttabvue.uspto.gov/ttabvue/ttabvue-91178281-OPP-64.pdf.

What is looked at in a dispute of this nature is the strength of the registered mark, the overall impression or similarity of the marks, the market for the products or services, the geographic regions, actual confusion generated by the use of the marks, the intent of the second user in choosing the mark, the tarnishment or harm to the reputation of the mark, and the sophistication of consumers when making a purchasing decision.

I can see how a few factors might be in your favor, especially if you have used your mark for 6 years with no consumer confusion generated by your use. But, again, you should contact a trademark attorney in your area who can advise you accordingly.


For a look at how the Trademark Trial and Appeals Board operates, here is a link: http://www.ttablog.com

 

[FlyingRon]

Then there's always the North Face / South Butt controversy.

 

[quincy]

Then there's always the North Face / South Butt controversy.

There will always be those who try to push the limits. Sometimes parodies/spoofs of trademarks will work and other times they wind up being costly failures, as was the case with South Butt. The young fellow who created South Butt and Butt Face pushed the wrong trademark holder and he pushed a bit too far.