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Elizabeth Jami Oliner

Elizabeth Oliner’s Answers

41 total


  • Similar Business Name & Trademark considerations

    Would I have a problem registering a business name that is similar to another business name? Both business are in the same industry but offer different services. For example: Pinnacle Capital Management already exists.....could one register Pin...

    Elizabeth’s Answer

    The standard used to determine whether a trademark is too similar to another one is a "likelihood confusion" standard. There are several factors that come into play, including: the similarity of goods/services and the similarity of the names (especially the dominant part of the name) in sight and sound. In the example, you provided an examiner at the USPTO would almost certainly think that the names of confusingly similar. They have the same dominant term "Pinnacle" and the services offered are in the same industry and likely overlap, as to some part of the business.

    My suggestion would be to choose a new name. The existing company may send you a cease and desist letter or sue you if that company believes there is consumer confusion or if you are diluting the strength of its own brand. And it seems very likely that the trademark office will reject it. Better to start a new business with a name that's not already been chosen by a company in the same space as you are.

    Good luck!

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  • Looking for an attorney to do a basic copyright/trademark on a product.

    I distribute an assortment of earrings under a "name" that I would like to trademark so that we have exclusive rights to that name for our display of earrings.

    Elizabeth’s Answer

    It sounds like you are seeking an IP attorney, who can clearly explain how you can protect your name and possibly some of your designs. The name you seek to register is a trademark registration. It may also be possible to copyright some of your earring designs.

    Every one answering this question is an IP attorney and you can contact any of us for a consult and to get more information on our practice.

    Good luck!
    Liz Oliner
    Olinerlaw.com

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  • Our start-up needs trademark help picking a name.

    Our counsel has told us when time comes to choose an official product name we will have to retain a trademark attorney. In the meantime, we have been tossing around names. One name we thought was cute is now being challenged by some team members w...

    Elizabeth’s Answer

    As all of the other attorneys have suggested, you are definitely advised to speak to a trademark attorney who can help with a preliminary screening search and counseling around your startup name ideas.

    It sounds like your name may fall into some sort of grey area, where it may be descriptive and/or generic, and not offer all of the protection that you may want. However, there may be some strategic ways for you to file to get the most protection possible.

    Definitely speak to an attorney who specializes in trademark filings. There are lots of us on this forum. I happen to work largely with startups and would be happy to set up a phone consult.

    Best,
    Liz Oliner
    Olinerlaw.com

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  • Company slogan and close name for similar business being used by a new business

    I have a business I established about 3 years ago. A new company very similar to mine is using a name very similar to mine and now is even using our slogan. We found out because we started getting customer service complaints from "customers" and c...

    Elizabeth’s Answer

    I would suggest you go ahead and speak to an attorney and get the trademark application filed first and then consider drafting a cease and desist letter to the other party after that. As the other lawyers have mentioned, you do have common law rights for using your slogan in commerce, but you will get additional protections by securing the federal registration for the phrase. Plus, you don't want the other party to go ahead and file the slogan before you, because that will create even more headaches for you, as you will need to file a formal opposition to prevent their mark from registering, which is time intensive and can get a bit costly.

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  • Can i be sued if my trademark name is similar to another brand? example: CRKD TEETH - CROWDED TEETH

    I recently trademarked my brand name and results came back that it had a few conflicts with other trademarked names because my name was similar to them but not the same at all. Can i be sued if i proceed with the trademark?

    Elizabeth’s Answer

    As every other lawyer here has explained, you can be sued at any time. The issue you should think about is whether you want to change your brand name since there is another company out there using a name that is similar to yours and making it difficult for you to get a trademark registration that you can enforce against others.

    You should definitely consult with a lawyer. One option you may want to consider is reaching out to the party cited against you in the office action to see if there is a co-existence agreement that can be reached.

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  • Started new business and trademark search

    I have started a new business that provides leads to local businesses. The business involves selling leads for Arielequipment. I was looking to buy a domain name arielequipmentquotes.com but I believe it was already taken. However arielequipmentq...

    Elizabeth’s Answer

    I would speaking to an attorney about a trademark search and the various options for getting a descriptive trademark registered.

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  • I want to trademark my online business name, which is actually a 'dot com' domain name. Do I trademark the '.com' portion too?

    I want to trademark my business name so competitors are unable to create online brands that are nearly identical to mine and provide the same service. For example, let's say my business name is "HealthcareCave.com LLC" (it's not - but the...

    Elizabeth’s Answer

    As my colleagues have pointed out the ".com" portion of the name does not have any inherent trademark meaning and so you would need to disclaim it.

    So, the important question for you to answer is: what is your brand? Ie "Healthcare Cave" or "Healtchcarecave.com"? That is, how are you marketing the actual brand to consumers and how does the company advertise itself on the content of the website? Whatever your answer is: that is the trademark you should file for first.

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  • Trademarking a band name

    I have a band - let's call us "The Dirty Dogs" who has been around since 2008. We have an album for sale on iTunes, etc. There is newer band in another state who goes by "Dirty Dogs" and is preparing to record an album. They sometimes informally r...

    Elizabeth’s Answer

    I would definitely suggest that you begin the process of applying for a trademark registration with the USPTO. You would want to do this before the other band does, simply because it will cause more serious complications for you if the other band registers first.

    Once you have done that, you should then go ahead and (with the help of an IP attorney) send a cease and desist letter to the other band and begin taking other enforcement actions.

    As my colleagues have mentioned, the fact that you have been using the name since 2008 is helpful to your case.

    I definitely suggest consulting with an IP attorney to get the above process in motion!

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  • Can someone register a trademark and use it to prevent a prior business name to be used?

    I created my Delaware corporation in 2011. In 2012, another company has been filing for a trademark which bears a similar name using classes that overlap with my business activities. The registration is still processed by the USPTO, but might comp...

    Elizabeth’s Answer

    • Selected as best answer

    You should go ahead and retain a trademark attorney who can help advise you on some options including: sending a cease and desist letter to the other company letting them know that you have superior common law rights and threatening to oppose their trademark or simply going ahead and filing a trademark opposition. If you have legitimately been using the confusingly similar name before this other company, your common law rights should allow you to succeed in this strategy if you do want to take this approach.

    If you do simply try to go ahead and simply file a trademark for a similarly confusing name for similar goods, your trademark is likely to be denied by the trademark office (USPTO), so you would need to take more aggressive actions against the other company in order to get a registration of your own.

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  • Can we name our fitness biz "Adrenaline Bar" if other fitness businesses already use Adrenaline (other words)?

    Adrenaline Bar is not trademarked. There in one Adrenaline Sports Bar in another state. We're struggling to understand at what point other fitness businesses have legal rights if their name incorporates the word Adrenaline but is a different comb...

    Elizabeth’s Answer

    I would also advise you to retain an intellectual property attorney. As a general rule, the examiners at the USPTO are only going to search for marks that are registered or pending on the federal register.

    However, the other business can assert its common law rights (ie it's been in business than longer than you) and try to cancel or oppose your trademark application or sue you for infringement. It is hard to predict if and when a business will do something like that--but it's always a risk. And certainly if you plan to expand into the state where the other Adrenaline Sports Bar is already in business, this is more likely to pose a risk for you going forward.

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