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Is This Trademark Likelihood of Confusion?

New York, NY |

I guess i am going too open & specific but i have no other way to describe it, so please forgive me.

I have a friction name "HELIKZO" which i want to trademark for my business in class 32 & 45 but here are some similar names in same & other classes as well.

Wanted to confirm - is there any Likelihood of Confusion?

My Name
- HELIKZO

Other Names
- HELIX
- HELIX BONG
- HELIXO
- HELIXOR
- HELIXON
- HELIKS
- HELIKON MEDIA

I see some very similar marks approved in same class, but i am still not sure about my case.

Any expert opinion on this? Thanks.

Attorney Answers 6

Posted

Not only are you too open and specific here, you essentially are asking for a legal consultation in public and waiving all attorney-client privilege rights that you could have. Moreover, no attorney here will properly advise you because we need all of the facts, not just the limited facts you present to us, and forming an opinion in a vacuum like this could lead us to advise you incorrectly and expose us to malpractice liability. Unfortunately, you cannot get an expert opinion for free just like you cannot buy a car for free.

All we can tell you here are general rules like the criteria used to decide if two marks are confusingly similar and therefore infringing. The following factors are usually considered when determining the likelihood of confusion between 2 marks (slight variations occur depending upon the particular court and jurisdiction):

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.

Good luck.

Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Questioner, notice that you omitted 12 of the 13 factors and yet wanted a specific answer. You will SAVE money hiring an attorney. You will waste much more if you don't. So far your business is legal monkey business and you are building your legal house of straw and establishing it on legal quicksand. Get an attorney before you really screw this up beyond repair and get yourself in a lawsuit.

Posted

The last poster raised many good points. Essentially what you are looking for here is an attorney to sign off on your D.I.Y. trademark clearance search. Instead you need to hire an attorney and have them write you an opinion letter that explains the significance of those other marks.

I will tell you that "Helikzo" would appear to fall on the more protected "fanciful" end of the spectrum. That may mean something, but might not when we look at the other names that show quite a few potential roadblocks for you.

Two things you would be well advised to do: see a TM attorney, pick a new name.

This answer does not create an attorney-client relationship. Please contact a lawyer qualified in your jurisdiction to discuss your situation in confidence. The guidance I have given describes only general legal concepts without knowing the exact factual details of your situation.

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Asker

Posted

Thanks, your answer was short and helpful.

Bruce E. Burdick

Bruce E. Burdick

Posted

And if you rely on the short and helpful answer to think HELIKZO is registrable over HELIXO and go pro se you will get your refusal to register the old fashioned way, you will earn it and deserve it. Go pro, don't go pro se.

Posted

In addition to the cogent comments by my colleague, I point out that "trademark" is not a verb. A business does not "trademark" a term. Rather it may elect to adopt and use the term as a trademark on specific goods.

Another step it might take is to seek to REGISTER the term as its trademark for those goods. That application for registration, moreover, might be filed with an agency in any of various domestic or foreign jurisdictions. Here, the "gold standard" would be the U.S. Patent & Trademark Office, for a national registration. An alternative might be a registration in one or more individual states in the U.S. or in a foreign jurisdiction.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com

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Bruce E. Burdick

Bruce E. Burdick

Posted

This Question's strategic lawyering is on ZO HELIK a path to trouble. In addition to not knowing the fundamental difference between "trademark" and "registration", the Questioner doesn't know the fundamental difference between "go pro" and "go pro se" and why PRO is fundamentally better.

Matthew Adam Pek

Matthew Adam Pek

Posted

humorous. good points all to a particularly unrefined IP query ... clearly arising from within the mind of a willful infringer i'm sure. all respect due, in reality, everyday life, within the firm, between TM lawyers, i would say it's rare indeed to find 2 IP attorneys dancing around the "verb-usage" of the term "trademark". funny to juxtapose how far "google" has come in trailblazing that path of super distinctiveness to just over the edge, back to generic (actually i'm quite wrong here, XEROX was definitely decades ahead of its time in making sure XEROX never got "q-tipped" or "kleenexed" .... or "googled". true, a "trademark" is just that - but ni truth, a source-identifier before all else. still, can we not refer to "trademarking" lightly in passing as a colloquialism for the registration process, from ITU to SOU and so on? even so, I sympathize with the frustration....if I meet 1 more person who starts "teaching me about branding" or purporting to anyway, upon learning that i know about trademarks, i'll have no other recourse then to attack the advertising clustercuss!

Posted

At this point I think my colleagues explained the problem and I am sure you realize that it might be time to seek some help on this before you invest in it.

Remember, the cost of a mistake may not be known for some time and I guarantee that marketing, advertising , branding and PR will all cost a heck of lot more than having a professional conduct a proper clearance search and filing.

Here is a great explanation of why hiring a lawyer to assist with your trademark can really make a big difference:
http://blogs.wsj.com/law/2013/04/10/when-it-helps-to-have-a-lawyer/

I will link you to some general helpful info below and suggest that you reach out to a lawyer in private to discuss your objectives. Most of us here, including myself, offer a free phone consult and I too am in NYC.

Best regards,
Frank
Natoli-Lapin, LLC
(see Disclaimer)

The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Bruce E. Burdick

Bruce E. Burdick

Posted

This question exemplifies the folly of going pro se instead of going pro. Spending money to "trademark" HELIKZO when HELIXO exists is sure starting off in legal quicksand.

Posted

We do not give expert specific opinions on Avvo, we give generalize answers that showcase our legal skills to interest Questioners and other attorneys in hiring us. For you to ask a specific question like that in an open forum like this shows just how bad you need to see an attorney. You certainly do have many other ways to describe it. You can't get a reliable specific answer without specifying the nature of the goods or services of your business and the goods or services of the prior marks. You take only one of the 13 DuPont factors (similarity of marks) and want a specific quotable opinion without us knowing any of the other 12 factors.

Next, it is clear you do not know the difference between "trademark" and "registration", which is fundamental to understanding either and both.

Now, just off the cuff, HELIXO and HELIKZO are phonetically similar, if not phonetically identical. A trademark examiner is not going to be fooled by that spelling difference.

You need to quit trying to get this free and instead get this right and get this attorney everyone is telling you to get.

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

I agree with my colleagues who have previously posted. Trademark analysis is complex. I would like to pass on to you that using a mark (even if you obtain initial registration) does not preclude you from subsequently being sued for trademark infringement by one of the other holders or from a subsequent TTAB action to cancel any registration obtained. I would strongly encourage you to retain counsel for specific legal advice and consider the costs of changing your mark now verses the costs of subsequent trademark litigation.

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