We applied for a Tradmark for our business. The USPTO rejected our request due to a company w/ a similar name. What can we do?

Asked about 1 year ago - Seattle, WA

The LLC was previously owned by another family member and the name was previously Trademarked, but it expired years ago and they did not have any documents that allowed us to search for it, plus I think we surpassed the renewal timeframe anyway. The conflicting name the USPTO identified is NOT identical, but it is similar enough to cause "confusion to consumers". Our application was simply the name of our company. Is there a way to respond to their rejection with additional details/logo/specific font that could help get it approved? Changing our name is not an option. We have six months to respond to the USPTO.

Attorney answers (5)

  1. Frank Anthony Natoli

    Pro

    Contributor Level 19

    6

    Lawyers agree

    Answered . You may want to file a response to the office action (see link below for some info on this). The first step however is to have the action reviewed and analyzed to get a good sense as to whether you have any reasonable arguments to make.

    I suggest reaching out to a trademark lawyer in private to discuss in more detail as there is really not much more anyone could add with access to the specifics. Most of us here, including myself, offer a free phone consult so you may want to take advantage of that.

    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
  2. Andrew Endicott Schrafel

    Contributor Level 14

    5

    Lawyers agree

    Answered . You should get an attorney that specializes in trademark law. If you previously had a registered mark they might be able to revive it, and if you didn't they would know the proper way to respond to the USPTO. The response requires an analysis of all the facts surrounding your business and the business of the mark that may be confusingly similar.

  3. Daniel Nathan Ballard

    Contributor Level 20

    4

    Lawyers agree

    Answered . Your most immediate problem is NOT whether the Trademark Office can be persuaded to register the trademark rights in your company name, it's whether you're infringing the other company's registered trademark rights by using that name. If so, changing your name is not an option -- it's a requirement. Only your own trademark attorney can review all the facts of this scenario in private in order to provide you with any actionable advice.

    Your primary goal is to do what's necessary to lawfully continue to use your company name, your secondary goal is to register those rights and your third goal is to figure out a way to force the other company to stop using the name and to abandon its registration. In that order. Good luck.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and... more
  4. Bruce E. Burdick

    Pro

    Contributor Level 20

    2

    Lawyers agree

    Answered . What you MUST do is see a trademark attorney. You are here because you are in over your head legally on this. When you get into a trademark conflict with the owner of a similar trademark, you need to stop doing this yourself and get professional help by someone who knows the law and procedure to best resolve the conflict to your advantage.

    The first thing to realize is that there is a potential conflict and you could lose your trademark. You could lose it either due to infringement of the other company's rights or due to failure to overcome the USPTO refusal to register. Your application is a public record and access is available on the Internet to anyone including the other company. You could be hearing from their attorney if they find out about this 2(d) likelihood of confusion refusal you received in your first Office Action. You need to see an attorney, a trademark or IP attorney, to get ahead of the curve on this or you could soon be SOL and lose all your trademark rights. An attorney might, in fact, advise you that changing your name is an option, the best option. If changing your name is, in your view, not an option then that is all the more reason to see a trademark owner so that "not an option" does not become a requirement.

    Six months is the standard statutory time period for response to an official action from a trademark examiner, particularly for a 2(d) refusal. That time passes more quickly than you think so you need to get help promptly. Do not delay.

    It sounds like you may have fouled up on your priority of use documentation in getting the rights of the previously owned LLC transferred. If the LLC had a prior REGISTRATION that is good, although not renewing it was a huge mistake, if that is the case.

    All of this is a horror story that should remind anyone reading this that getting competent legal help can SAVE you money and not getting competent legal help can cost you dearly. Hear it may cost the Questioner from Winter Garden, FL the rights to the company name. Indeed it likely will cost the company name if a trademark attorney is not consulted forthwith.

    Be careful how much you post on this website. If you are actually from Winter Park, FL and actually have received a 2(d) refusal, a good trademark searcher could quickly locate exactly who you are. I could do it, I think, if I wanted to spend the time (I don't and won't unless your opponent hires me.)

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more
  5. Maurice N Ross

    Pro

    Contributor Level 20

    1

    Lawyer agrees

    Answered . There may be a way to respond successfully to this office action, but you certainly cannot do so. You need to retain experienced trademark counsel.

    But you made a big mistake here---you tried to conduct a trademark search, file a trademark company, and choose a brand name for your company on your own, without retaining trademark/IP counsel. This almost always backfires because even sophisticated business people are often incapable of conducting an adequate trademark search and analysis. Your lack of legal sophistication is clear--for example, you cannot merely add additional font, details, logos, etc to overcome a trademark rejection unless these additions eliminate possible consumer confusion. Changing font, colors, details etc will not do you much good unless they eliminate the possibility of consumer confusion. What matters here is whether your business operates in the same geographic area, industry and competes for the same customers as the pre-existing trademark owner. If so, then there is a likelihood of consumer confusion and you will have to change your name. And yes indeed, changing your name could be the only option here.

    My guess is that you will have to change the name, and that it will be your only option. You have a long shot chance to file a response to the office action that would convince the USPTO that there was no likelihood of confusion. But I doubt you will be that lucky. Don't keep shooting yourself in the foot by trying to do your own legal work. Hire a lawyer or suffer the consequences. In fact, you clearly are already paying a heavy price for failing to have retained an IP lawyer to handle your trademark matters (and my guess is that this problem is the tip of the iceberg for you---whenever a company fails to hire trademark counsel it also does other things the cheap and easy way and ends up in trouble).

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