Hi Susan,

I don’t know about the Trademark Act, but I’m sure hoping there is a Section 2(d) for a Design Patent “which prohibits the development of a product that is likely to cause confusion, mistake, or deception”. Months ago we went back and forth a few times about my product being copied. Now you see what happens first hand when someone infringes on someone else. Sorry about your suspension notice, I’m sure you’ll be able to come up with something not so “similar”. Good luck!

JoyG
www.DesignsByJoyG.com

Sue,

Here is a link to a thread from when Eva went through this sort of thing….

http://www.edisonnation.com/forums/other/topics…

She had a company come after her to change the name. She ultimately decided not to fight that battle and changed the name.

Generally speaking, it’s really not uncommon to encounter two different entities using an identical or confusingly similar trademark to market a product and/or service without necessarily interfering with each other’s businesses.

One possible situation you might consider checking into is what’s known as a Trademark Coexistence Agreement…Then again, drafting a satisfactory Trademark Coexistence Agreement could definitely create some serious challenges in itself…But hey, it is an option to consider?!

Trademarks are tough. I filed one myself with the USPTO. Very easy and only $350 but you will always get an office action in six months and a rejection and then you will need a lawyer to answer.

I hear trademarks are always rejected and must be fought out….and the other thing…if you become big you will always be accused of trademark infringement. They typically want some money out of you and then go away.

Sometimes having the same name can help a product. Bring up that argument. There is Handistraps in England. I am Handi-Straps. I think many looking for my product find theirs so it can help them and vice versa.

You can also have the same name but in totally unrelated fields that don’t compete unless they are very big well known names. You probably could not go and sell Starbucks wrenches…but you may be like if you have the last name Starbuck and prove a good reason for the name that relates to you or your product.

Tricky stuff…you will need a lawyer if you want that R in a circle for registered trademark but some major products never even registered…you just need an international sale in another state and you are protected in that state. There are other ways…and one way to be registered but by going around the USPTO!!! Forgot it though…sorry…

susan, i went through it…margaret thanks for finding that thread…

i filed ‘cinch-eaze waistbands’

the big corporation did not like me using the word ‘cinch’ because they are selling a brand of jeans called ‘cinch’ jeans….

since my product and their jeans are under ‘clothing’, they will not let me use that word…

so they contacted me…i decided that since my business was in it’s infancy, that it would be ok to switch the product’s name…

i’ve always had to make choices where i want to spend my money….and paying lawyers to fight this, did not make sense to me……

the whole thing from start to finish lasted a year…..

basically i represented myself…

they weren’t jerks or anything….but i did not make it easy for them ; )

ps the new name to my product is HipSnugger Waistbands

and one more thing, my licensee did not care if we changed the name….going forward legal issues will fall into my licensee’s jurisdiction, but since the issue began before i licensed, i had to see it through…..

now my licensee will pay for filing trademarks and the such..

Hey Eva,

Love the new hair!

Margaret, thanks for providing a link to the other thread. I learned a lot from your situation, Eva.

The first trademark I ever filed was for my online retail business. I did it myself and everything went through without a hitch. I guess that was the exception.

The person who registered a variation of my ‘mark’ a few months before I did appears to be a private individual. I did several internet searches for them and their mark and came up empty. (They’re not using the name at all and filed the trademark with an intent to use; just as I had.)

What’s really strange is the fact that they provided a typed description of their product in the class information. What they described was my product design which I’ve had a patent-pending on dating back nearly two years. (They have no published patents or patent applications that I could find).

I would have registered the trademark much earlier. Unfortunately, the .com was not available. As soon as I was able to register the .com, I submitted my trademark application.

I’m hoping that I can send a response letter to the USPTO to request they lift the suspension based on the fact that the two marks are very different due to spelling and hyphenation. It’s worth a try. Otherwise, I’ll just chalk it up to another wonderful learning experience.

Eva, I love the new name. HipSnugger Waistbands.
Great Choice!

If they don’t use their trademark on a product within six months, doesn’t it become void anyway? My last trademark lapsed because I didn’t pursue the product. For my new one, I’m going to make some t-shirts and mail them as promotional items just so I can say I used it.

Eva, ALL my waistbands are HipSnuggers. And WaistSnuggers. And GutSnuggers…

Here’s a good name… GutSuckers!

Thanks for mentioning the six-month time period, Rita. I looked it up and found that this starts after the USPTO issues a Notice of Allowance (after a mark has passed the opposition period). If the owner of the mark does not file a statement of use within six-months, the application will be declared abandoned. (A request for extension may be filed before the six-months are up.)

The USPTO will not register a mark until a statement of use has been filed.

rita, how are you?…good to see you…..

susan, gutsuckers=’s liposuction LOL

toni, i remember asking EN forum members about product name suggestions….i think i remember someone suggested that name….

e.

margaret,
love your new avatar as well..i think this is your first solo pix?

and yes, i really prefer being a brunette…going back to my roots, literally

Hey Susan,

“I registered a name last February and received a suspension notice today because a “similar” mark had been filed a few months earlier. I never saw this other mark during my searches because the other applicant intentionally spelled it wrong and included two hyphens. (My trademark was correctly spelled with no hyphens.)”

Spelling and hyphenation are generally besides the point here. Particularly if you filed a standard character mark and not a stylized one, if the two marks sound identical, they are virtually identical. Period.

While it sounds like the other party has the upper hand here, do note that just because they have (or possibly will have) registered a trademark with the USPTO, that does not necessarily mean that they have trademark protection, it just means that if they do have trademark protection it will be enhanced. i.e. their mark must be used in commerce consistently enough as a trademark (at least, eventually), and their mark must be distinctive. The USPTO does not conduct a trademark search before allowing registration outside of reviewing other marks it has on file.

Likewise, just because the USPTO has determined that this other mark conflicts with your own, that does not necessarily mean that you would be infringing the other party here (although, in this case, it definitely sounds as if you would be, provided the other party begins using its mark in commerce within the allotted time frame. This time frame can be greater than six months if extensions are properly filed and allowed).

Lastly, it is possible to have a domain name without using it as a trademark. If you have purchased the domain name, you do not necessarily have to choose a new one.

It is the same principle as in reverse. For example, you could not register McDooonald’s resturant, even though you intentionaly mis-spelled it.

The best names from a legal standpoint to come up with, are completely made up words not derived from any words or common names. Exxon, Xerox, AstraZeneca are good examples.

Look at this name:

TechnoSavy

Even though it is not a word but made up of 2 half combined words,you may have a very difficult time getting a trademark. And even if and when you received a trademark, other companies may knowingly and wilfully trample on your trademark because it weak. They will say it is just shortened slang for “technology savy”.

I had a similar issue. I believe it is suspended because someone filed a mark with an intent to use or they have not registered for some other reason, and you have to wait until their application is disposed of. The only way that you will get the registration is to wait until they abandon, which can take years, or if you used the mark in commerce before them you may be able to challenge their registration.