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Brian Patrick Kinder
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Brian Kinder’s Answers

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  • Does changing one letter in a trademark allow me to trademark the new, altered word?

    I would be changing a "C" to a "K" in a five letter word, where the word with the "C" is property of another company. Both versions do not have any meaning in any language. Does this small change allow me to avoid infringing on the other company's...

    Brian’s Answer

    Trademark law is - at the core - essentially a consumer protection law. We don't want a consumer buying one product or service thinking there is an affiliation with another product or service. The answer to your hypothetical is unfortunately not possible since it does not provide sufficient information for an attorney to answer you. If the registered mark is TRAKE and you want to register TRACE, then perhaps that might be different enough since the two words are not pronounced the same and have totally separate meanings. You have to look at these things through the eyes of a consumer and ask "is there a likelihood of confusion" between the two. You REALLY should speak to an attorney before making any determination

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  • How do spaces and punctuation marks impact a trademark registration?

    I'm simply trying to understand the specifics of a trademark registration as it relates to spaces and punctuation marks. For example using a familiar brand, is there a distinction between "Mr. Clean" or "Mr Clean" or "MrClean"? How precise is the...

    Brian’s Answer

    You apply for your trademark in the exact manner in which it is used. Using your familiar brand as an example, you would apply to register MR. CLEAN as the trademark since that is how it is used.

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  • Can I have an 'actual use' application converted to an 'intent to use' application?

    I filed an 'actual use' trademark application, thinking that the way I used the trademark was sufficient to be considered actual use. (Yes, I know I should have had a trademark attorney file the application.) Anyway, as it turns out, I have found ...

    Brian’s Answer

    Yes, you can convert a use based application (Section 1a) to an intent-to-use application (Section 1b). Look up the Trademark Manual of Examining Procedure (TMEP) online and then look at Section 806.03(c) Amendment From §1(a) to §1(b). It explains everything in detail and I have copied and pasted it below. Keep in mind, however, that this often times does not solve the problem because the issue is usually more substantive. You really should speak with a tm lawyer to sort this out. It takes many months to get an application through to registration and if you have to start over you want to do it sooner rather than later. Best of luck and here is the text of TMEP Section 806.03(c):

    If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. 2.35(b)(3).

    When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. 1051(b)(3)(B); 37 C.F.R. 2.34(a)(2).

    See TMEP §806.03(j) regarding amendment of the basis after publication.

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  • Is it illegal to hash tag someone else nickname on your photo ?

    is it illegal to hash tag someone else nickname like z in your photo ? z is a nickname of the bodybuilder that inspire lot of people and i saw lot of people hash tag his nickname to their photo when they work out , is that illegal in anyway ? a...

    Brian’s Answer

    Intellectual Property laws are both broad and complex. Every case rises and falls on the specific facts of the case. One thing you will find that holds true, however, is that the law in general will not allow someone else to profit off the name, reputation, and goodwill of another. Ask yourself, "would I be mad if someone else did this" or worse yet "would I be on the phone to my lawyer if someone else did this?" If the answer is yes, then there is a good chance that the other person will be on the phone to their lawyer.

    At the end of the day, if someone is profiting commercially from someone else, then there is generally going to be some form of remedy available. Intellectual Property lawyers can generally figure out a way to explain the harm and seek the appropriate remedy. Sure, there are lots of defenses like fair use in copyright and the like, but anytime you are doing something to trade off someone else - then you are probably at risk. The question then becomes - as my colleagues on this site have suggested - whether someone is going to enforce the rights and how much in the way of "damages" is at stake.

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  • Can the name of a neighborhood be protected from use by the public in naming their businesses?

    I want to include the name of the neighborhood in the name of my apartment building. I did a quick search on the Federal trademark website and found that there are several businesses that have trademarks using the neighborhood's name in their nam...

    Brian’s Answer

    Trademark and service mark rights are not rights for all purposes....they are tied to the type of product and service used with the trademark or service mark. Two companies with identical trademark names can co-exist in the marketplace so long as consumers are not confused by the usage. By way of example, DELTA airlines and DELTA bathroom faucets. Consumers don't walk into a hardware store and think to themselves, wow, that airline must be making bathroom faucets now.

    The point is this, if there are others in the neighborhood using the same terms (i.e., a car dealership) that wouldn't necessarily prevent someone else from using the same terms (i.e., a liquor store). However, if the products and services are associated in the minds of consumers, then that could be a problem. You also have to look at logos, the way the marks are presented, etc. Very complex area of the law and numerous caveats and exceptions. My colleagues are correct when they say you should consult with a trademark lawyer. You are probably going to spend a few thousand dollars on signage, so it is worth your investment to not to have to change your signage later.

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  • Can the name of the product and its accompanying logo be trademarked under the same application?

    Does the name and the logo have to be submitted under two different trademark submissions or are they considered the same submission and therefore can be filed in one application?

    Brian’s Answer

    No, separate applications are required. One application would be directed to the words and the other to the logo. You will typically see the first type of application called a "standard character" or "word mark" application and the other a "stylized" or "design mark" application. Depending upon how you use your mark, it might also make sense to apply to register the design element of your logo alone - that is, if you use it separately and it has independent commercial value.

    Have to be practical because it can get expensive to file multiple applications since the Trademark Office charges a per class, per application filing fee. However, most law firms (mine included) will give you a big break on total fees if you file multiple applications at the same time. Also, there are ways to file your applications to get more "bang for your buck."

    Would be happy to talk with you (1/2 hour free consultation) if you have any questions.

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  • Can I legally use a trademark word in conjunction with another word in my business name?

    There is a company in Florida that has trademark the words spartie, sparties, and sparty. Their business is called Sparties. They offer salon and spa serivces. Can I use the word sparties in conjunction with another word in my California business ...

    Brian’s Answer

    It sounds like the terms is a telescoped word joining SPA and PARTY (or the plural) together as a single word. If they have registered it as you say, then they are entitled to a presumption of ownership and validity under the law (you would bear the burden of proving otherwise - one of the many advantages of registering your trademarks).

    The test for trademark infringement then essentially boils down to the issue of whether consumers will be confused into thinking that there is some affiliation, authorization, sponsorship, etc. between two entitites. There are numerous factors that go into making this determination, so to fully answer your question any lawyer on this site would need to do a more complete analysis. For example, you would need to do a complete trademark search to determine if the word is so diluted by common usage that consumers are conditioned to seeing it and do not rely on that term alone in making decisions. They would need to know how well-known this other party truly is. They would need to know the other words you plan to use.

    In the end, I am skeptical of the possiblity here. The term sounds pretty creative/distinctive, may not be used very prevalently, and unless you come up with a really distinctive second term that completely changes the perception such that consumers wouldn't think there was some affiliation, then it is definitely a no go. Unfortunately, I think the answer is probably no, but can't really be diagnosed without a full analysis. You really should consult with a qualified intellectual property attorney before you proceed.

    Best of luck.

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  • If I use a trademarked company's name in a drop down menu on my internet page, would that amount to infringement?

    I am not including a specific state's law as our website is going to be accessible throughout the U.S. but if it helps, we are a corporation incorporated in Delaware but registered as a foreign corporation in California in order to "do business".

    Brian’s Answer

    It is very difficult to answer these sorts of questions in a vacuum - you really need to see how you're using it to make the determination. However, let me see if I can give you some guidelines because it essentially comes down to whether a consumer is likely to think that there is some sort of affiliation with your company and the owner of the trademark.

    For example, if you are selling windshield wipers, and your website makes clear that you are an independent company, then you would be entitled to use the trademarks pertaining to the make (i.e., Ford, Chevy, Toyota) and model (i.e., Mustang, Tahoe, Camry) on your website so that people can choose the correct fit for their vehicle.

    That being said, if you only listed Ford on your website and sold nothing but Ford on your website, and your website essentially looked like you were an authorized Ford dealer when you were not, well then that would be a problem.

    As you can see, it really depends upon the manner in which you are using it and it really can't be diagnosed in a vacuum.

    I hope that helps?

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  • Petition to Cancel at Trademark Board

    A cancellation proceeding is pending and the two claims on of which is fraud on the registration (there is none) and genericness (now at this point in time). Does the Board take into consideration the strength of marks in a case like this? See...

    Brian’s Answer

    Short answer, yes.

    Long answer.

    The strength of a mark falls along a spectrum with a generic term falling on the end where there is no strength and the term is not a trademark. Sometimes legal jargon makes things sound more complicated than necessary. So, here is a very easy way to distinguish between a trademark and a generic term (and you don't need to be a lawyer to make the call): a trademark is an adjective, a generic term is a noun.

    As an example, lots of people like to (incorrectly) point to the term Kleenex when talking about genericness. Although it is true that lots of people might ask for a Kleenex (i.e., a noun), at the end of the day I think everyone understands that the term Kleenex is actually a brand name (i.e., an adjective) and that you are actually asking for a Kleenex brand (adjective) facial tissue (noun). In contrast, the term facial tissue (when used in connection with facial tissues) is a noun and therefore not a trademark.

    That last sentence might have seemed odd, but keep in mind that if you used the term FACIAL TISSUE in connection with...oh, I don't know, say a rock band, then the term is not a noun. Instead, it is an adjective (FACIAL TISSUE) describing the noun.

    So, to answer your question, yes, the Board will take into consideration the "strength of the mark" in determining the issue of whether or not a mark is generic. It will look at how the term used and in association with what type of underlying goods and services. From there, it will determine if the word is a noun or an adjective. If it is an adjective, then it will proceed with the next part of evaluating the stregth of the mark, namely, where along the spectrum it falls (see my colleague James Juo's excellent comments in that regard).

    Hope that helps.

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  • My new company has the same name as someone else in a different state. I do apparel. they do precious metals/stone

    can i use the same name or will that cause a conflict. I am planning on going international and they are too.

    Brian’s Answer

    Unfortunately, nobody here will be able to answer your question with an affirmative yes or no because to do so would require you to provide more specific facts. To preserve attorney client privilege you simply cannot get specific answers to specific questions on an open forum like this.

    In general, however, I can tell you that test for trademark infringement focuses on whether there is a likelihood confusion. There are many, many factors that go into determining if a likelihood of confusion exists. Chief among them are whether the marks are similar, whether the goods are similar, and how strong the marks are - both in terms of how commonly used the words making up the mark are and whether the words are descriptive of the underlying products.

    For instance, just a pure hypothetical mind you, if your mark was JEWELS for clothing, then those words don't necessarily describe the underlying goods and would be considered on the stronger end of the spectrum, but might be commonly used in the industry and therefore weakened as a result. On the other hand, on the precious metals and stones side of the house, JEWELS for jewelry is fairly (if not completely) descriptive and their mark would be considered weak. Make sense?

    Another example would be Apple for apple scented candles. It is completely descriptive and not enforceable - so companies are permitted to use it to accurately describe their apple-scented goods, However, there is simply no reason to put Apple on a computer unless you are trying to benefit from someone else's name. Same is true with commonly used terms like DELTA. I am sure that you have heard of DELTA airlines and DELTA faucets. Both hugely famous marks, but you as a consumer don't walk into Home Depot and think to yourself, "oh, that airlines must be making bathroom faucets now." So there is no likelihood of confusion.

    In order to determine your situation, you would need to know the words comprising the mark, how commonly used the word(s) comprising the mark are in the respective industries, whether there is convergence of marketing channels, customers, whether there is a logo, stylization to the wording, etc., etc., etc.

    As I said, however, unfortunately, I don't think you can go into those sorts of specifics here without concerns about attorney-client privilege. That being said, many attorneys will do a free consultation and let you know sort of "gut-instinct" wise where you stand. They will then make recommendations about where to go next. If you are going international, you really should take the time to consult with an attorney.

    Best of luck to you in your endeavors and sorry I couldn't be more specific.

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