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Is a word bubble trademarkable?

Chicago, IL |

Our company's trademark features text inside a word bubble. Many other companies seem to have something similar. Is there any conflict of IP rights?

Attorney Answers 7

Posted

Liklihood of confusion is very fact specific. However, if you see many other companies using this vehicle, your strategy about taking them all on is not clear, and the chance of it backfiring on you are significant.

The above is general legal and business analysis. It is not "legal advice" 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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Bruce E. Burdick

Bruce E. Burdick

Posted

For the 7th Circuit, there are 7 factors. See my answer for the list. Better yet, see an IL-licensed trademark attorney.

Posted

I agree that it fact specific. You should speak with a trademark attorney. If your product or services is unique, there may be no problem at all.

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Bruce E. Burdick

Bruce E. Burdick

Posted

You need to apply the 7 factor test enunciated by the 7th Circuit. [Easy to remember, 7 factors in 7th circuit]. See my answer for a list.

Posted

You would have to have a trademark attorney do a search for you and advise you on potential liability.

Just because one person trademarked a word bubble does not mean no one else in the world can use a word bubble as a trademark, but without doing a proper analysis, your question cannot be answered.

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Posted

The text bubble alone would not be enough to make a confusingly similar argument. This is particularly so if you and the other entity are in completely unrelated goods or services.

Your question suggests that you need some attention in this area to make sure you are handling your trademarks correctly. I would suggest discussing with a lawyer in private and most of us here, including myself, offer a free phone consult.

Best regards,
Frank
Natoli-Lapin, LLC
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Bruce E. Burdick

Bruce E. Burdick

Posted

There isn't a "bubble vs. no-bubble" test for likelihood of confusion in IL. There are 7 factors used in the 7th Circuit. See my answer for the list.

Posted

Word bubbles have been around as long a cartoons, certainly before 1923. No one has exclusive right to use of word bubbles, as is attested to by the comic section of your local newspaper any given day.

Using a word bubble as a trademark might be distinct or might be a copy of one of those other companies, depending on respective dates of first use, respective products, actual confusion or not, strength of the senior mark, expansion history of each party, etc. You should use a trademark attorney to help you sort through the applicable factors. Here in the 7th Circuit [where IL is] We analyze seven factors to determine whether consumers are likely to be confused:

(1) the similarity between the marks in appearance and suggestion;
(2) the similarity of the products;
(3) the area and manner of concurrent use;
(4) the degree and care likely to be exercised by consumers;
(5) the strength of the plaintiff's mark;
(6) any actual confusion; and
(7) the intent of the defendant to "palm off" his product as that of another.
Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir.2001). No single factor is dispositive. Courts may assign varying weight to each of the factors depending on the facts presented, though usually the similarity of the marks, the defendant's intent, and actual confusion are particularly important. Id.

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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Posted

First search for the word at the USPTO web site: http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4805:p0on89.1.1. After searching the uspto database, even if you think there is no mark on the word that searched for, do not assume that your mark can be registered at the uspto. After you file an application, the uspto must do its own search and other review, and might refuse to register your mark. Contact a trademark attorney to help you. You can also use professional help to assist your search, e.g., visit www.cardinal-ip.com

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Posted

Even basic elements such as lines, circles, other basic geometric shapes, and other simple designs are potentially "trademarkable," especially in conjuntion with other distintive elements, so it is best to have an attorney evaluate your specific facts and circumstances.

This answer is for general purposes only and does not establish an attorney-client relationship.

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