Is This Trademark Likelihood of Confusion?

Asked 10 months ago - 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)

  1. Alexander H Butterman

    Pro

    Contributor Level 13

    12

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    Answered . 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.... more
  2. Gerry J. Elman

    Pro

    Contributor Level 15

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    Answered . 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... more
  3. Simon Byron Brody

    Contributor Level 7

    8

    Lawyers agree

    1

    Answered . 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... more
  4. Frank Anthony Natoli

    Pro

    Contributor Level 19

    3

    Lawyers agree

    Answered . 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-hel...


    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... more
  5. Bruce E. Burdick

    Pro

    Contributor Level 20

    2

    Lawyers agree

    Answered . 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... more
  6. Mary Michelle Clapp

    Contributor Level 7

    Answered . 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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