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

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cstar

New member
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
 


quincy

Senior Member
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

Senior Member
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.
 
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zddoodah

Active Member
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

Senior Member
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.
 
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