Trademark Denied, what to do?

[Derrick12]

Thanks everyone for the advice and help on here! I think it all makes sense to me why my trademark was denied. I feel stupid that I didn't think about this before applying for the trademark, but I guess mistakes happen. I'm not going to file an appeal and just look for another name.

But two things I am still confused by if someone can help me understand:

1. I was doing some research today looking at designer names online on websites of big department stores like Neiman Marcus and Barneys. I was cross-referencing these names with the trademark database, and found interesting things-

For example, there are two designer brands/companies -

Narciso Rodriguez

Robert Rodriguez

They have the same last name, but only Robert Rodriquez has a trademark. What is the liability of this other company Narcisco Rodriguez facing without having a trademark? Can they be sued by Robert Rodriguez? They are in the same category of women's clothing?

2. I also noticed that many big fashion label brands that are selling on Neiman Marcus and Barneys do not have a trademark. I'm really confused then why it is important? I mean these are big label brands selling to department stores and they don't have a trademark.

Thanks in advance for the help.

 

[PayrollHRGuy]

1 & 2

They may well have registered their TM in another country and if so that country may well be a signer of an international treaty that the US is a party to.

 

[quincy]

Thanks everyone for the advice and help on here! I think it all makes sense to me why my trademark was denied. I feel stupid that I didn't think about this before applying for the trademark, but I guess mistakes happen. I'm not going to file an appeal and just look for another name.

But two things I am still confused by if someone can help me understand:

1. I was doing some research today looking at designer names online on websites of big department stores like Neiman Marcus and Barneys. I was cross-referencing these names with the trademark database, and found interesting things-

For example, there are two designer brands/companies -

Narciso Rodriguez

Robert Rodriguez

They have the same last name, but only Robert Rodriquez has a trademark. What is the liability of this other company Narcisco Rodriguez facing without having a trademark? Can they be sued by Robert Rodriguez? They are in the same category of women's clothing?

2. I also noticed that many big fashion label brands that are selling on Neiman Marcus and Barneys do not have a trademark. I'm really confused then why it is important? I mean these are big label brands selling to department stores and they don't have a trademark.

Thanks in advance for the help.

Trademarks in the US do not need to be registered to gain trademark rights. Trademark rights are gained by the use of the marks in commerce, with the first user of a mark the presumed owner of the mark (this is a rebuttable presumption).

Trademark infringement, as said earlier, centers on consumer confusion. When consumers are not confused, or are not likely to be confused, by a dual use of the same or similar mark, the same or similar marks can peacefully coexist.

There are two Dove trademarks, for example - one for cosmetic products and one for ice cream/candy products. There are several ABCs and Entrepreneurs. There are Apple trademarks.

But, despite peaceful coexistence with some shared trademarks, you have trademarks that are not approved for registration because of opposition from the original trademark holder or because a trademark examiner finds consumer confusion is likely, for reasons that include the reasons given you. Likelihood of confusion based on name similarity for goods in the same Class. Even foreign translations of registered trademarks (mentioned because of the detour this thread took) will not help a trademark applicant get their trademark approved. One example out of many is "Noche" for wine products, refused for registration by the USPTO because there is a "Night" trademark for wine.

It is best for someone who will be spending a lot of time and effort into building a brand name that they do not waste their money developing a business using a trademark that is likely to be challenged by the holder of an existing same or similar trademark. There are far better ways for a developing business to spend their money than to spend it on attorneys and/or legal costs defending against an infringement suit.

Good luck.