I created my brand in 2012, I want to trademark in clothing category but there is already a registered trademark named similar to mine

[cstar]

CALIFORNIA, USA

I made a twitter account using my brand name in 2012. I created a website for my brand's clothing in 2013 while in high school. I am now in college ready to invest in product development. As I was researching the United States Patent & Trademark Office, I noticed there is already a similar live trademark registered 6/23/2020.

The only difference between my brand name and the live trademark filed is that theirs has an "S" attached to the end. This other company with the live trademark has a small following and frankly I do not expect them to flourish. May I file for my trademark in the clothing category despite the close similarity? If I file using trademarkia and get rejected because of the similarity could I contest it based on first use? OR if rejected for clothing category could I switch to a different category like Entertainment, as I have and will be releasing videos and music under my brand name. I have already published a music video on youtube underneath my company. Would I have better chances of getting the clothing category if I file alongside the entertainment category at same time?

My understanding is that because I started the development of my brand years before the opposing live trademark became registered, I am allowed to continue doing business with my name since I had started first despite not having the trademark.. and the name isn't exactly the same, the difference is an s at the end of their name (plural noun) whereas mine without the s becomes an adjective or singular noun.

What is the best route to take?

Best Regards,
cstar

 

[Just Blue]

@quincy

 

[quincy]

CALIFORNIA, USA

I made a twitter account using my brand name in 2012. I created a website for my brand's clothing in 2013 while in high school. I am now in college ready to invest in product development. As I was researching the United States Patent & Trademark Office, I noticed there is already a similar live trademark registered 6/23/2020.

The only difference between my brand name and the live trademark filed is that theirs has an "S" attached to the end. This other company with the live trademark has a small following and frankly I do not expect them to flourish. May I file for my trademark in the clothing category despite the close similarity? If I file using trademarkia and get rejected because of the similarity could I contest it based on first use? OR if rejected for clothing category could I switch to a different category like Entertainment, as I have and will be releasing videos and music under my brand name. I have already published a music video on youtube underneath my company. Would I have better chances of getting the clothing category if I file alongside the entertainment category at same time?

My understanding is that because I started the development of my brand years before the opposing live trademark became registered, I am allowed to continue doing business with my name since I had started first despite not having the trademark.. and the name isn't exactly the same, the difference is an s at the end of their name (plural noun) whereas mine without the s becomes an adjective or singular noun.

What is the best route to take?

Best Regards,
cstar

Your best route is to seek out the personal advice of a trademark attorney in your area, who can review the registered mark, compare it to yours, and let you know whether it would be smarter for you to challenge the registered mark holder’s registration or come up with another name that doesn’t conflict with one in use by someone else.

(thanks, Blue )

 

[quincy]

I am going to assume my response was unsatisfactory and add a bit of information. No one who comes to this forum likes to simply be told to see an attorney.

There are several reasons why I recommend a personal review by an attorney in your area, cstar, with the major reason being that for your questions the real trademarks need to be known.

The registered mark holder had to have used his mark in commerce prior to applying for regular registration of the mark with the USPTO. Use in commerce is necessary for registration.

The Trademark Examiner does, among many other things, a trademark search to determine if the applicant’s mark is the same or similar to an existing mark used on the same or similar goods or services. A trademark application will be rejected if a conflict exists.

It is only after the trademark examiner’s examination of the trademark and application that the trademark will be published in the Official Gazette as a candidate for registration.

Once published in the Official Gazette, time is given for others to object to the registration of the mark by filing an opposition to the registration. If there is no opposition filed, or if an objection is filed and resolved in favor of the trademark applicant, the trademark is placed on the trademark registry.

Once the trademark is registered, someone can still challenge the registration of the mark if they believe it infringes on their own mark but this challenge takes place in court. A challenge to a trademark registration at that point can get very costly.

There is the possibility that you could continue to use your mark in a limited fashion if you can prove first use in commerce but this again requires a personal review of the specifics - and we cannot do personal reviews on this forum.

Without any review, my instinct is to tell you to come up with a new name to identify your clothes and music videos. The attorney you see can provide better and perhaps different advice based on the specifics.

Good luck.

 

[zddoodah]

I made a twitter account using my brand name in 2012. I created a website for my brand's clothing in 2013 while in high school. I am now in college ready to invest in product development.

At any point in the last eight years, have you done anything other than use the name on a Twitter account and a website? Have you actually created and sold clothing using the name (or otherwise used the name in commerce)?

May I file for my trademark in the clothing category despite the close similarity?

You could submit an application, but it likely would be rejected if there is another, nearly identical mark registered in the same product category.

If I file using trademarkia and get rejected because of the similarity could I contest it based on first use?

"Trademarkia"? Regardless of what that might mean, you can contest anything you like. Your likelihood of success would depend primarily on how you answer the two questions I asked above.

OR if rejected for clothing category could I switch to a different category like Entertainment, as I have and will be releasing videos and music under my brand name.

You can try. As before, your likelihood of success depends on the relevant facts that aren't included in your post. Also, it appears that you mistakenly omitted the word "been" from the last clause of the sentence above.

Would I have better chances of getting the clothing category if I file alongside the entertainment category at same time?

No.

My understanding is that because I started the development of my brand years before the opposing live trademark became registered, I am allowed to continue doing business with my name since I had started first despite not having the trademark.

The validity of your understanding depends on what exactly you mean by "I started the development of my brand."

and the name isn't exactly the same

As you have explained it, they are effectively "exactly the same." You don't suppose you could legally start manufacturing a line of smart phones under the name "Apples" or a line of cars under the name "Fords," do you?

What is the best route to take?

Consult with a local trademark attorney. I suggest you do this immediately because you might still have time to challenge the other trademark registration you mentioned.

 

[quincy]

At any point in the last eight years, have you done anything other than use the name on a Twitter account and a website? Have you actually created and sold clothing using the name (or otherwise used the name in commerce)?



You could submit an application, but it likely would be rejected if there is another, nearly identical mark registered in the same product category.



"Trademarkia"? Regardless of what that might mean, you can contest anything you like. Your likelihood of success would depend primarily on how you answer the two questions I asked above.



You can try. As before, your likelihood of success depends on the relevant facts that aren't included in your post. Also, it appears that you mistakenly omitted the word "been" from the last clause of the sentence above.



No.



The validity of your understanding depends on what exactly you mean by "I started the development of my brand."



As you have explained it, they are effectively "exactly the same." You don't suppose you could legally start manufacturing a line of smart phones under the name "Apples" or a line of cars under the name "Fords," do you?



Consult with a local trademark attorney. I suggest you do this immediately because you might still have time to challenge the other trademark registration you mentioned.

There is always time to challenge another’s use of a trademark (that is what makes for a trademark infringement suit) - but if the mark that was registered is now a live mark (as cstar said it was), the time for filing an opposition to the registration has passed. cstar potentially, however, could petition the USPTO for cancellation of the registration (if filed within 5 years of date of Official Gazette publication). The Trademark Trial and Appeal Board will schedule a hearing.

“Trademarkia” is a trademark search and registration company.

I agree that cstar should see a trademark attorney in his area.

 

[cstar]

At any point in the last eight years, have you done anything other than use the name on a Twitter account and a website? Have you actually created and sold clothing using the name (or otherwise used the name in commerce)?



You could submit an application, but it likely would be rejected if there is another, nearly identical mark registered in the same product category.



"Trademarkia"? Regardless of what that might mean, you can contest anything you like. Your likelihood of success would depend primarily on how you answer the two questions I asked above.



You can try. As before, your likelihood of success depends on the relevant facts that aren't included in your post. Also, it appears that you mistakenly omitted the word "been" from the last clause of the sentence above.



No.


The validity of your understanding depends on what exactly you mean by "I started the development of my brand."



As you have explained it, they are effectively "exactly the same." You don't suppose you could legally start manufacturing a line of smart phones under the name "Apples" or a line of cars under the name "Fords," do you?



Consult with a local trademark attorney. I suggest you do this immediately because you might still have time to challenge the other trademark registration you mentioned.

I sold one tee using the name almost a couple of years ago and a few hoodies to a friend about 6 weeks ago. It seems as though I'll be rejected for the trademark in the clothing category due to the similarity with the other company's name but if I was using the name in commerce prior to their registration being effective, then may I continue to sell clothing with the name? For example I sold a shirt before their trademark registration became effective, therefor I may continue using my brand name. Is this a possibility, I could use the name without the trademark if I had used it first?



What are some questions that I should prepare to ask the local trademark attorney?

 

[FlyingRon]

Show your attorney your marks and describe how and when you used it in commerce along with letting him know all you can about the other potentially conflicting mark. Note that even applying for a mark (let alone the attorney fees involved) are going to be a lot more than your current occasional sales can support. Unless, you have substantial existing reputation in your mark, you're probably most financially better off to just come up with a new one.

 

[quincy]

I sold one tee using the name almost a couple of years ago and a few hoodies to a friend about 6 weeks ago. It seems as though I'll be rejected for the trademark in the clothing category due to the similarity with the other company's name but if I was using the name in commerce prior to their registration being effective, then may I continue to sell clothing with the name? For example I sold a shirt before their trademark registration became effective, therefor I may continue using my brand name. Is this a possibility, I could use the name without the trademark if I had used it first?



What are some questions that I should prepare to ask the local trademark attorney?

Do you have evidence of your tee-shirt sales and the dates of the sales?

I agree with FlyingRon that the costs involved in challenging the trademark owner’s registered mark is probably going to exceed any benefit you will realize.

If you apply for trademark registration and file a petition with the USPTO for cancellation of the other user’s mark, what will happen is that the USPTO will declare an interference and a hearing will be scheduled before the Trademark Trial and Appeal Board. There are several possible decisions that could be made.

One of the possible outcomes could be that the Patent and Trademark Commissioner cancels the other party’s mark and allows you to register your mark, and another is that both your mark and their mark could be registered with limits placed on both marks to prevent consumer confusion in the marketplace. Another possible outcome is your registration is rejected and the other party’s mark is allowed to stand as is, preventing you from using the trademark entirely.

The trademark attorney you see in your area will be able to give you a realistic look at what will be involved and how likely you are to have a successful outcome.

Good luck.

 

[adjusterjack]

the name isn't exactly the same, the difference is an s at the end of their name (plural noun) whereas mine without the s becomes an adjective or singular noun.

If you were manufacturing cinnamon candy and your brand is Red Hot do you think not being exactly the same as Red Hots (becuase of the s) would save you from a lawsuit? It wouldn't.

 

[quincy]

Minor alterations to an existing trademark (like adding an “s” or a hyphen) or creating a trademark that sounds when said aloud like an existing trademark or having a trademark that appears on first glance to be an existing trademark (like a logo mimic) or creating a trademark with the same meaning as an existing trademark (e.g., using a thesaurus) will not be enough to avoid a legitimate claim of trademark infringement.

Trademarks are used to distinguish one company’s goods and services from those of all others. Trademark law centers on consumer confusion. A consumer needs to be able to determine the origin of goods/services.

 

[zddoodah]

What are some questions that I should prepare to ask the local trademark attorney?

Ask whatever questions you like. A legal consultation is about the attorney asking you questions, not the other way around. Beyond that, I echo what "FlyingRon" wrote in post #9 in the thread.

 

[Ohiogal]

Ask whatever questions you like. A legal consultation is about the attorney asking you questions, not the other way around. Beyond that, I echo what "FlyingRon" wrote in post #9 in the thread.

Wrong. A legal consultation is a conversation where both sides ask questions. It is not an interrogation of one side or the other. Both sides are interviewing the other to see whether the attorney wants to represent the client and the client wants to hire the attorney. Either one can refuse to deal with the other.

 

[zddoodah]

Wrong.

Opinions are like you know what.

 

[Ohiogal]

Opinions are like you know what.

I am dealing with facts as I am an attorney and engage in several legal consults a week. Do you?