If someone got a registered trademark (R) for a slogan that I would like to use for a company name, can I still trademark it?

Asked over 1 year ago - Rancho Cucamonga, CA

Would I have to change it? I seen someone in another state trademarked 3 words as a mantra and I would like to use for the name of my company in another state. My business would like to sell merchandise under this name.

Attorney answers (3)

  1. Angela Small Booth

    Contributor Level 8


    Lawyers agree


    Answered . The answer might be yes, and it might be no. You cannot use a confusingly similar trademark without liability. But similarity of the words is only one factor in a multi-part factual analysis. The factors change in minor ways depending upon what jurisdiction you are in, but essentially they are: (1) the strength of the mark; (2) the proximity (similarilty) of the goods or services; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent. For example if the mark is registered for medical machinery and you want to use it on lipstick, the differences in the goods alone may be enough to distinguish your goods from the registrant's. Or, you may not sell computers under the mark APPLE, but shoes might be o.k under that mark.

    A good trademark attorney can easily analyze these factors for you and explain the risk you might be taking in adopting the trademark.

    Angela Small Booth, practicing trademark law for 25 years.

    Comments provided on this website are not intended as legal advise and do not create and attorney client relationship.
  2. Bruce E. Burdick


    Contributor Level 20


    Lawyers agree

    Answered . Good answers. Bottom line: That would be risky legally. The smart choice nearly always is to steer clear of prior trademarks and come up instead with your own original arbitrary or fanciful name so you can stop others. If you could use this slogan, despite it being registered, so could others and that would mean your investment could be for naught. Why start out your business on such a weak and limited basis, when the language allows for a nearly infinite number of phrases.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more
  3. J Scott Scarbrough

    Contributor Level 13


    Lawyer agrees

    Answered . As Ms. Booth accurately described, there are many factors involved here. If the three words have become so famous or well known that it is practically impossible to not associate anything with those three words as not originating from the owner of that three word tademark, then there is the high degree of likelihood that that mark owner would try to stop your use. Even if it is a different catagory or state. It is all a degree of how well known the mark has become as to the width and breath of the protection.

    Most of the attorneys on AVVO offer a free consultation and if the question is a straightforward as it sounds, it may be easily be answered in a short conversation.

    Good luck.

    My disclaimer is simply that Avvo already has an adequate disclaimer.

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