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Similar business names. Entirely different entities.

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

Hypothetical question:

Lets say a web site started in 1998 named Pizza.com. This web site existed as just a yellow pages for Pizza businesses. You'd land on the home page and there would be 60 little banner ads for all the pizza places around the country. There wasn't anything else on it, and the site touted itself as the yellow pages of Pizza.

Then in 1999 a completely separate individual on the other side of the country had an idea for a Pizza information site. One that tells about how pizza is made, how to make it yourself, the best ingredients, etc. They have a discussion forum like this one, where people can discuss recipe's and techniques. There are information pages on the various ingredients, where they came from. There's a section on the history of pizza and its origins. There's an online store where you can buy ingredients and cookbooks. This individual, knowing nothing about the other side, registered the domain name PizzaTalk.com

Five years goes by .... PizzaTalk.com has grown to a 100 page site with 10,000 members and 5,000 customers in their online store.
Pizza.com is still a yellow pages site with banners all over it.

Ten years goes by ... PizzaTalk.com is now a well known site in the "pizza industry". In fact the folks at Pizza.com who never really grew their site even know about PizzaTalk.com and have a great relationship with them. They often discuss workng together, etc. Conferences on pizza happen and PizzaTalk.com is always there. Meets folks in the industry. Well known. The site has grown to 50,000 members and 20,000 online customers in the store.

Finally 13 years goes by. Its today. Pizza.com decided to scrap the banner format and do what PizzaTalk.com is doing. An information site on Pizza. No big deal to the PizzaTalk guys because a lot of sites have done similar. Now there are many sites out there. PizzaTalk, PizzaHelp, Pizza.com, MakeAPizza.com etc .... all is well in the world.

Then ****************************************************************************************************************.

PizzaTalk realizes they never trademarked their brand. So they hire an attorney to do this for them. The attorney does a search and notices that in 1998 the folks at Pizza.com registered the trademark for "pizza". And for "Pizza.com". They listed their description as "pizza information" and the USPTO rejected them based on that. So they changed their description to "advertising services" and got approved.

The attorney wrote the folks at PizzaTalk the following note:

I attach a search of www.uspto.gov (US trademark database) for PIZZA.

There is a prior registration for PIZZA.COM for advertising services. I think this would likely prevent you from obtaining a US trademark registration for PIZZATALK, as the USPTO would see this prior registration and use that as a basis for refusal. I also think the USPTO would likely resist granting registration of PIZZATALK on the grounds of descriptiveness. The applicant for PIZZA.COM overcame such a descriptiveness rejection, by claiming advertising services.

If you have been coexisting with PIZZA.com for some time, then you are probably going to continue to be able to coexist without problems. Presumably, if they were going to object, they would have done so by now, at least its my understanding you have been using PIZZATALK for years and they appear to have been using PIZZA for years. Its going to be difficult for anyone to claim to own PIZZA for this subject.

If you still remain interested in applying to register your mark, you should consider at least applying for the stylized version (more distinct than PIZZATALK (words only)), or better yet, NEED, HELP, GET PIZZATALK (including a first term)

There is a difference between getting a registration from the USPTO, and common law rights to use a mark (and the practical realities of use of names and marks with or without objection from or conflict with others). Registration is not required to have rights. Registration is a way to confirm and prove rights and to afford several statutory advantages. The USPTO does not inquire whether an applicant has prior use if there is a prior registrant already in place. They reject based on the registration. A new applicant can challenge a third party’s prior registration, e.g., try to cancel it, which is a long and expensive process. Or a new applicant can ask the third party registration for confirmation of consent of registration and use, then submit that to the USPTO when/if the USPTO rejects their application based on the third party’s prior registration. The USPTO usually accepts that type of evidence, but not a guarantee.

----------------------------------

1) There is very little chance pizza.com will contest because we are on good terms and we all know we are separate entities.

2) I dont understand why the USPTO would reject this application just because we share similar words. That doesn't make any sense. There are millions of businesses that do similar things that share simliar words in their names. They dont go around rejecting every single applicant because someone registered a portion of the name already. We are separate entities.

3) The search he sent me contains countless other pizza trademarks that include the term pizza. So i dont get why he thinks I will be rejected. Except that maybe they have other additional words, and mine only has 1 additional word "TALK" .... still .. thats a nonsense illogical reason to refuse to let me protect my brand.

4) I can't just "add" new words to the beginning of the name. (NEED, HELP, GET) ... that isn't my brand. That isn't my domain name. That would be a completely different company.

Do you agree with the assessment I have been given? Or is it perfectly reasonable that PIZZATALK will be accepted even in light of the existing pizza.com registration?

PS: Pizzatalk and pizza.com are not real domain names related to this situation.
 
Last edited:


justalayman

Senior Member
PizzaTalk realizes they never trademarked their brand.
yes they did. They may not have registered it but they did trademark their brand.

also realize that if an entity fails to defend their rights, after some time they lose the right to attempt to defend them.


The USPTO does not inquire whether an applicant has prior use if there is a prior registrant already in place.
yes they do. That is supported by the fact there is a section titled: first used in commerce. That is for a date. Beyond that, realize you do not gain rights by registering a mark when it is not used in commerce. Use in commerce is how you establish your rights. Registering it gives notice to others of your use and provides other statutory based benefits.
 
Thanks for the response. Unfortunately my main questions are still on the table.
Hope someone can tackle them.

To reiterate:

1) They came first. I did not.
2) They are not going to dispute my attempts because we both know we are separate entities. They wouldn't feel threatened by my move as they are fully aware of my web site and its unique status. So this isn't an issue
3) The real issue on the table is whether USPTO is going to say "no" just because someone else registered a trademark with a similar word in it. That is an absurd process if that is the case. And I can list a million exceptions to that rule in a heartbeat.
 

justalayman

Senior Member
If your application is otherwise acceptable, I do not see the USPTO refusing the registration for the name similarity. As you have stated, there are many tm's that are very similar to other tm's but as always, they do have the final say so.


after all, they approved Pizza Haus and a Pizza Casa when there was an existing Pizza Hut.

adding one point: you did say the names used were fictitious so I cannot address this specifically. One point is if there will be confusion. If the actual names might cause confusion, they could deny the registration.
 
Thanks. Can you think of an example of two names where one would cause the confusion you are referring to?

Hypothetical or real.

This guy charges very little for his trademark service (attorney) and im just wondering if he uses this method to upsell ... claiming complications ...
 

justalayman

Senior Member
Offhand, not really but here is a fun case involving confusion:

http://ipcorplaw.com/new-ruling-in-famous-victoria%E2%80%99s-secret-trademark-dilution-case/

realize that cases such as this get (not; can get) very expensive very quickly. I would love to see the final costs of that case. It's easily hundreds of thousands of dollars, per party and quite possibly beyond that:eek:

btw: dilution is a result of the confusion issue

but if the other party does not have an issue with this, it really isn't applicable. There will be a period where your application will be open to objection from other parties.
 
What is stopping an attorney from contacting the other party and suggesting that they oppose it, just so that he can run up more attorney fee's ?

Honestly this guys incessant negativity about the possible complications made me very paranoid about working with him, and that (above) is one reason why.

I was in a similar situation in the past where a person wrongly suing my company had many long hours of email and phone conversations with my attorney.

And the minute I ran out of money (nearly $100,000) and told my attorney i was broke and tapped out and at the bottom of a hole, mysteriously the guy suing, called off the dogs.

I swear they milked me for all I had, together.

I feel better about a different trademark attorney who has told me right off the bat that i should have no problems.
 

justalayman

Senior Member
LegalBurgers;3059177]What is stopping an attorney from contacting the other party and suggesting that they oppose it, just so that he can run up more attorney fee's ?
You said there was little to no chance the other party would object to your TM.



I was in a similar situation in the past where a person wrongly suing my company had many long hours of email and phone conversations with my attorney.
Um, what stopped you from directing your attorney to cease contact with the other party. They cannot charge you if you direct them to not act.





I feel better about a different trademark attorney who has told me right off the bat that i should have no problems.
that is the guy I would worry about. There is a possibility of problems but it depends a lot on the similar named party. To say you should have no problems without a lot of qualifiers is poor advice in my mind.
 

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