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Can I register a trademark with this designation?

New York, NY |

My company releases playing cards. If I want to release a new deck named "Spirit" and I find that "Spirit" is registered in class 28 under "card games", can I apply for a trademark called "Spirit BY Mystery Playing Cards" instead of "Spirit"? Please note: Mystery Playing Cards, is already registered owned by myself.

Attorney Answers 5

Posted

I still think the answer to your variation of yesterday is valid. No, I don't think the USPTO will register. Yes, I think you might find yourself required to defend expensive litigation.

The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

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Posted

One would have to examine the use of the "Spirit" owner and determine whether it is likely to cause market confusion. This is one of the areas in which trademark registration is not an easy, do it yourself project.

Under the rules governing the conduct of attorneys in New York it may be necessary to remind you that this answer could be considered attorney advertising.

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1 comment

Bruce E. Burdick

Bruce E. Burdick

Posted

Can Samsung (a registered trademark) sell smartphones and call them iPhone by Samsung? How quick do you think Apple would get to a judge for an injunction? What makes you different?

Posted

I agree with my colleagues.

Trademark questions are extremely fact specific. To answer your question in a meaningful way, an experienced intellectual property attorney would need to run a trademark clearance search to see what marks are out there and exactly how they are being used. It is only when an experienced trademark attorney learns all of the specific facts about your proposed mark and runs a thorough trademark clearance search, can he or she tell you if you would be able to register your trademark with the United States Patent and Trademark Office.

You will need to hire an experienced trademark attorney to assist you. There are many well qualified attorneys listed on Avvo and many have reasonable fees.

Hope this helps. Best of luck!

This answer is for general information purposes only. This communication does not constitute legal advice, nor does it form an attorney-client relationship.

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Posted

This is a quite complex question. The issue is whether your registration might create consumer confusion with the companies that own the other 28 "spirit" trademark registrations. Adding the words "BY Mystery Playing Cards" does not guaranty that you can use "spirit" for this purpose. Further, it is irrelevant that you already own "mystery playing cards". You need to regain counsel to conduct an appropriate trademark search and analysis.

In this regard, it is critical for you to consider whether your company sells, or expects to sell, products only in the United States, or whether you will sell to other countries. The analysis may change from one country to another, and in this era of the internet, you need to develop a global trademark strategy. Further, you might need to register your trademark in each country in which you intend to do business. Far too often companies focus their trademark concerns only on the U.S., when in fact, you need to operate from a more global perspective.

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2 comments

Asker

Posted

Dear Maurice, Thanks for the helpful reply. I've found another alternative word. This word is registered in the class 28, but it used for gold products. Can I still use it in "common law" or register it for the playing cards purpose? thanks

Bruce E. Burdick

Bruce E. Burdick

Posted

What gold products? Gold playing cards? Depends on how close the other products are and on a number (half a dozen) of other factors that you don't state. Hire Maurice and quit trying to pick his brain for free. This site is for finding a suitable lawyer. He's your guy, call him.

Posted

Can Samsung (a registered trademark) sell smartphones and call them iPhone by Samsung? How quick do you think Apple would get to a judge for an injunction? What makes you different? Don't do this. Expect to get a CDL if you do. Come up with your own name, don't try to copy someone else's name as a "shortcut", it will end up not being a shortcut but rather a stress-raiser. Pick something unique and then you can stop others from doing what you now want to do.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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