I have been doing preliminary trademark searches on potential business names to start a t-shirt company. I came up with a name, but when I searched it on the USPTO website, there was another registration already for the same name under "G&S - clothing, namely shirts and hats." I Googled the organization name and found it to be a Christian organization in Tennessee. They appear to be using the name to brand a youth outreach program that they run. They do not have any shirts or hats for sale on their site.
It seems to me that they are not using the trademark in a way that would conflict with my business, but I'm worried that my trademark application would be rejected because they claim to sell clothing. Do I have any recourse to have the USPTO investigate this so I can get a trademark?
Just because there are no hats or t-shirts on their website doesn't mean they're not using their TM for those goods, or [erhaps that TM is an intent-to-use TM and they haven't started using it yet. If you think you've got grounds to petition to cancel someone's trademark, it's theoretically possible to hire an IP litigator to pursue that goal.
But the cost of doing that is likely prohibitive, so that's something only the most well-financed parties do. For a brand new company like yours, it's a much more practical solution to simply choose another name that's both viable and available.
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It is likely that they offer shirts and hats to members in their program; i.e., they may not sell the shirts & hats, but still offer them in commerce.
If you are determined to obtain that mark, you could file an opposition proceeding when the mark is published for registration. An opposition proceeding is effectively a litigation proceeding with the main issue that is litigated being whether the mark that is about to be registered is substantially likely to cause confusion with an existing mark. These procedures follow their own somewhat arcane procedure, and you will not be able to conduct such a proceeding without an attorney (I have seen several pro se litigants try; every one of them lost due to procedural mistakes).
Another (and perhaps better) option would be, as Attorney Koslyn recommended, finding a different mark.
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Attorneys Koslyn and Sherinian are right.
But I'd supplement their comments with a possible further consideration. Maybe there would be a way for your business to coexist with them. Find an attorney to advise you about "concurrent use" agreements, and then contact the organization with a proposal that would be too good for them to refuse.
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If you picked a mark that is like someone elses, you should pause and think about it. Have you GOOGLED IT? Many others may have superior rights even though not registered.
Read my articles on how you can lose money if you chose a mark that is not good.
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As my colleagues allude to, the benchmark test is likelihood of confusion, a legal term of art that considers several factors in determining the issue of trademark infringement. In some cases, even identical marks can co-exist and avoid confusion because their goods/services are so far removed that the consumer is unlikely to confuse the two brands.
Frankly you always need a trademark attorney, but given that there seem to be some issues with similar marks and your desired mark, you definitely need an experienced trademark counsel if you wish to move forward with this brand for your t-shirt line. But, better that you analyze this issue now and know what you're getting into (from a trademark perspective) than printing 1500 shirts and a website splashed with a brand name that you may ultimately recall or "take down". Not to mention potential legal fees and damages if you are sued for trademark infringement.
A search and clearance report should give you an indication of the legal landscape and potential path to trademark protection for this mark. Start there.
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