Trademark Denied, what to do?

[Derrick12]

What is the name of your state? Illinois

I registered for my trademark few months back and just got a letter that my trademark was refused because of the following reason: Refusal – Likelihood of Confusion

I read the reasoning of the trademark examining attorney, but feel strongly that he's wrong in his explanation. He says that:

My company/brand name: JADE FLEUR is similar to another company name called FLEUR FLEUR, which is also in the same trademark class - jewelry. And there is a Similarity of Marks and Similarity of Goods.

(fyi - I changed the actual company brand name for this example since I don't want to make it public because of the ongoing situation)

First, I don't understand how a customer can be confused by these two brand names, in my opinion they are different. I agree that they have a "common word", but I feel they are still different. I've seen a lot of famous fashion brands where they have the same "last name" but different first names. And they have trademarks to these names. Am I getting this correct?

Second, the similarity of goods reasoning- I checked the other company and they deal in dog jewelry. My brand/company is starting a regular jewelry line for women. How can these goods be similar?

I wanted to know if anyone can help me understand how this happened? Does the reasoning make sense? What are the likely chances of winning an appeal given the above reasoning? Should I put in time and money to appeal? Or since I just started my company/brand, should I change the name and try for a new trademark?

Thanks so much in advance for the help!

 

[Zigner]

If I were buying jewelry, I would believe that "Jade Fleur" and "Fleur Fleur" were related, so I would be confused.

 

[quincy]

What is the name of your state? Illinois

I registered for my trademark few months back and just got a letter that my trademark was refused because of the following reason: Refusal – Likelihood of Confusion

I read the reasoning of the trademark examining attorney, but feel strongly that he's wrong in his explanation. He says that:

My company/brand name: JADE FLEUR is similar to another company name called FLEUR FLEUR, which is also in the same trademark class - jewelry. And there is a Similarity of Marks and Similarity of Goods.

(fyi - I changed the actual company brand name for this example since I don't want to make it public because of the ongoing situation)

First, I don't understand how a customer can be confused by these two brand names, in my opinion they are different. I agree that they have a "common word", but I feel they are still different. I've seen a lot of famous fashion brands where they have the same "last name" but different first names. And they have trademarks to these names. Am I getting this correct?

Second, the similarity of goods reasoning- I checked the other company and they deal in dog jewelry. My brand/company is starting a regular jewelry line for women. How can these goods be similar?

I wanted to know if anyone can help me understand how this happened? Does the reasoning make sense? What are the likely chances of winning an appeal given the above reasoning? Should I put in time and money to appeal? Or since I just started my company/brand, should I change the name and try for a new trademark?

Thanks so much in advance for the help!

You certainly have the option of appealing the decision. Without knowing the actual trademarks, though, it is impossible to say what your chances are of being successful. My guess is your chance of success is probably slim.

Trademark law centers on "likelihood of confusion." Several factors are looked at when determining if confusion is likely to be generated by the use of a mark that is the same or similar to a mark already federally registered.

These factors include not only the similarity of the marks themselves but the similarity of the goods being offered, how distinctive the mark is, and the care an ordinary consumer takes when making a purchasing decision.

If you put famous trademarks into your example you can see how a consumer might be confused by the origin of the goods being offered, erroneously believing the newer product is being produced by the original trademark holder.

Instead of Jade Fleur and Fleur Fleur use Jade Pepsi and Pepsi Pepsi.

Here is a link to the USPTO where you can download both the Trademark Manual of Examining Procedure (TMEP) and the Trademark Trial and Appeal Board Manual of Procedure (TBMP), to see what is considered when deciding whether a trademark can be federally registered:
https://www.uspto.gov/trademark/guides-and-manuals/manuals-guides-official-gazette

 

[LdiJ]

Ok, Jade is the precious stone jade and fleur is the French word for flower. So, why not change the French word into the Spanish, Italian, Portuguese version of the word in question? In this case, flor or fiore. That would still give you the exoticness you are looking for without risking confusion on the two names. Its highly unlikely that anyone would confuse Jade Fiore with Fleur Fleur.

 

[quincy]

Ok, Jade is the precious stone jade and fleur is the French word for flower. So, why not change the French word into the Spanish, Italian, Portuguese version of the word in question? In this case, flor or fiore. That would still give you the exoticness you are looking for without risking confusion on the two names. Its highly unlikely that anyone would confuse Jade Fiore with Fleur Fleur.

The "Fleur" and "Jade" are used as examples. They are not the real trademarks.

And translating a trademark into a foreign language is not on its own going to make a trademark noninfringing.

I agree, however, that coming up with a new trademark is probably best. A trademark that has no similarity at all to an existing mark would be smart.

 

[LdiJ]

The "Fleur" and "Jade" are used as examples. They are not the real trademarks.

And translating a trademark into a foreign language is not on its own going to make a trademark noninfringing.

I know that those have been used as examples. I was using mine as an example as well. Translating the only common word into another language certainly could make it non infringing.

The word flower, in the English is so common that using it for any company name would be almost impossible to be infringing. (and again, this is just an example) Tom's flowers, Mary's flowers, Chicago Flowers. Nobody is every going to win an infringement case on that. Its when you make it more unusual that its possible for confusion therefore the possibility of infringement. His examples of Jade Fleur and Fleur Fleur were just that kind of example. But when you trade out the "fleur" for even the same word in another language, its not going to be confusing.

The same things applies to other examples.

 

[quincy]

I know that those have been used as examples. I was using mine as an example as well. Translating the only common word into another language certainly could make it non infringing.

The word flower, in the English is so common that using it for any company name would be almost impossible to be infringing. (and again, this is just an example) Tom's flowers, Mary's flowers, Chicago Flowers. Nobody is every going to win an infringement case on that. Its when you make it more unusual that its possible for confusion therefore the possibility of infringement. His examples of Jade Fleur and Fleur Fleur were just that kind of example. But when you trade out the "fleur" for even the same word in another language, its not going to be confusing.

The same things applies to other examples.

The trademark has ALREADY been denied registration by the trademark examiner due to similarity in name and goods.

Translating a registered trademark into a different language is not a way to avoid infringement. It is no different than trying to capitalize off a registered mark by spelling it differently (sound-alike if not look-alike).

The best way to get a trademark approved for registration is to not use words already registered for the same class of goods, whether the words are different in looks but sound alike or are translations.

 

[LdiJ]

The trademark has ALREADY been denied registration by the trademark examiner due to similarity in name and goods.

Translating a registered trademark into a different language is not a way to avoid infringement. It is no different than trying to capitalize off a registered mark by spelling it differently (sound-alike if not look-alike).

The best way to get a trademark approved for registration is to not use words already registered for the same class of goods, whether the words are different in looks but sound alike or are translations.

So, you are saying that if the OP changed his fictional company name to Jade Flower, selling women's jewelry, to it would make it still a potential infringement as too similar to Fleur Fleur, selling dog's jewelry? Sorry, but I think that you are way off the mark on this one.

Now, if I knew the ACTUAL names in question I might possible be able to be convinced differently based on the actual words used, but if they are anything like the context of the examples used, again, I think you are way off the mark.

 

[quincy]

So, you are saying that if the OP changed his fictional company name to Jade Flower, selling women's jewelry, to it would make it still a potential infringement as too similar to Fleur Fleur, selling dog's jewelry? Sorry, but I think that you are way off the mark on this one.

Now, if I knew the ACTUAL names in question I might possible be able to be convinced differently based on the actual words used, but if they are anything like the context of the examples used, again, I think you are way off the mark.

I think that advising a poster that it is okay to translate a registered trademark into a foreign language - without knowing what the registered trademark is - can be harmful to a poster. And it could result in another costly trademark registration denial.

 

[LdiJ]

I think that advising a poster that it is okay to translate a registered trademark into a foreign language - without knowing what the registered trademark is - can be harmful to a poster. And it could result in another costly trademark registration denial.

the examples were changing ONE word into another language when the other word of the name clearly had no similarity at all.

I was advising the poster to explore that as an option. It certainly cannot be harmful to try to register one word in a different language than the previous attempts at registration. After all, the OP isn't being sued the OP is simply being denied a registration for something too similar. Its possible to make it not similar but still keep the spirit of the name he was trying to get.

 

[quincy]

the examples were changing ONE word into another language when the other word of the name clearly had no similarity at all.

I was advising the poster to explore that as an option. It certainly cannot be harmful to try to register one word in a different language than the previous attempts at registration. After all, the OP isn't being sued the OP is simply being denied a registration for something too similar. Its possible to make it not similar but still keep the spirit of the name he was trying to get.

Trademark registration is not inexpensive. Each registration is $300+ per application per class.

Advising someone to "try out" different variations on an existing registered trademark to see what can be approved for registration is bad advice, made worse by the fact that the real trademarks are unknown.

I really wish you would learn a little about the law before posting.

 

[LdiJ]

Trademark registration is not inexpensive. Each registration is $300+ per application per class.

Advising someone to "try out" different variations on an existing registered trademark to see what can be approved for registration is bad advice, made worse by the fact that the real trademarks are unknown.

I really wish you would learn a little about the law before posting.

I have personally been through an actual trademark lawsuit and won. Over single word company names that were the same word in two different languages.

 

[quincy]

I have personally been through an actual trademark lawsuit and won. Over single word company names that were the same word in two different languages.

I don't believe you, quite frankly. Please provide a link to the trademark lawsuit.

Here is a link to the doctrine of foreign equivalents (please note the "Fiore" case example):
https://www.bitlaw.com/source/tmep/1211_01_a_vii.html
https://www.bitlaw.com/source/tmep/1210_10.html
We do not know the real trademarks here. We know only that the registration was denied due to likelihood of confusion due to similarity of names and goods.

It is bad advice to tell a poster to keep applying for trademarks using variations on a registered mark.

You might want to check out some Trial and Appeals Board decisions dealing with registered English word trademarks and attempts to register their foreign equivalents. The initial refusals are (almost always) affirmed on appeal.

 

[Derrick12]

You certainly have the option of appealing the decision. Without knowing the actual trademarks, though, it is impossible to say what your chances are of being successful. My guess is your chance of success is probably slim.

Trademark law centers on "likelihood of confusion." Several factors are looked at when determining if confusion is likely to be generated by the use of a mark that is the same or similar to a mark already federally registered.

These factors include not only the similarity of the marks themselves but the similarity of the goods being offered, how distinctive the mark is, and the care an ordinary consumer takes when making a purchasing decision.

If you put famous trademarks into your example you can see how a consumer might be confused by the origin of the goods being offered, erroneously believing the newer product is being produced by the original trademark holder.

Instead of Jade Fleur and Fleur Fleur use Jade Pepsi and Pepsi Pepsi.

Here is a link to the USPTO where you can download both the Trademark Manual of Examining Procedure (TMEP) and the Trademark Trial and Appeal Board Manual of Procedure (TBMP), to see what is considered when deciding whether a trademark can be federally registered:
https://www.uspto.gov/trademark/guides-and-manuals/manuals-guides-official-gazette

Thanks so much for the example of "Jade Pepsi" and "Pepsi Pepsi". I think I can understand it clearly now! It does make sense to me when it it this distinct with a well known brand.