If I file an intent-to-use trademark application for a particular phrase, which phrase is a component of an already-registered trademark (Trademark X) that appears to be distinguishable from my mark, will my trademark registration be a complete defense to any action by the holder of Trademark X? Basically, does the USPTO's acceptance of a trademark application operate as a determination that the underlying mark is sufficiently distinct from existing registered trademarks, such that acceptance of an application effectively gives the applicant a green light to use the mark as described in the application.
Pamela and Laura are correct. Some additional guidance you may wish to consider concerning the ability to register such a mark may be found in the TMEP, the guide that the examining attorneys of the USPTO rely upon in examining marks to determine whether they are entitled to register or not. Specifically, Section 1207.01(b)(iii) provides:
"It is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services. Sometimes, the rule is expressed in terms of the dominance of the common term. Therefore, if the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences."
Some examples to consider which have been ruled upon concerning their registerability when thinking about your mark are as follows:
VEUVE ROYALE for sparkling wine found likely to be confused with VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN for champagne, noting that the presence of the “strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”;
Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical”;
Even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, similar overall commercial impression is created;
VANTAGE TITAN for MRI diagnostic equipment held likely to be confused with TITAN for medical ultrasound device, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark” to the registered mark would not avoid confusion;
likelihood of confusion found between SAM EDELMAN and EDELMAN both for wallets and various types of bags;
likelihood of confusion found between CORAZON and design and CORAZON BY CHICA and design, both for jewelry;
MACHO COMBOS (with “COMBOS” disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services;
CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held likely to be confused with CSC for computer time sharing and computer programming services;
RESPONSE held likely to be confused with RESPONSE CARD (with “CARD” disclaimed), both for banking services;
SPARKS BY SASSAFRAS (stylized) for clothing held likely to be confused with SPARKS (stylized) for footwear;
CAREER IMAGE (stylized) for clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms;
CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use.
This may or may not be applicable to your instant case based upon that matter which you intend to ad to the already registered mark. We thought it could be potentially relevant to your issue, however.
So we echo Pamela and Laura's thoughts regarding your need to seek assistance should you choose to adopt a mark which incorporates another's already-registered mark on two fronts. First, as to whether your suggested mark would be distinct enough to be entitled to registration. Second, even if it is entitled to registration whether it is likely that the prior registrant would object to the mark either during the registration thereof or once you begin use of the same and, further, if an objection occurs whether a successful defense of your position and adopted trademark would be possible.
Trademark Application Attorney
If I understand your question correctly, you are asking if the mere acceptance by the USPTO of your application means that it is capable of registration and a bar to any action by any other party - the answer is NO and the question tells me that you do not understand how the process works. You should hire a trademark attorney to give you guidance or you will waste a lot of time and money.
More than half of all trademark applications are rejected and I would venture to guess that most of the rejected applications have been filed by non-attorneys. Do yourself a favor and hire a trademark attorney.
Trademark Application Attorney
Let me also add that even registration of your trademark is not a bar to an action by another party. It may be a defense, but it is not a bar.
You're under the misimpression that trademark rights are acquired by registration. They're not, they acquired by use, although registration provides benefits and helps in enforcing TM rights.
TM registration is a fairly long process, often a year or more, and no, the USPTO's receipt of a submitted application isn't any kind of "green light" or other determination, it's just the start of the process, and it takes months just to get an application assigned to an examining attorney for review.
You're also under the misimpression that if 2 TMs are "distinguishable" (which by the way, you're not qualified to determine), that that's some kind of standard. The actual standard is whether your TM creates any consumer confusion and therefore infringement.
Trying to register a TM which incorporates someone else's TM rights is probably a recipe for failure, but no one on Avvo can evaluate these TMs, you need your own TM lawyer. .
Since the TM application fees are non-refundable, many mistakes are irreversible, and as my colleague mentioned, about 1/2 of all TM submissions get rejected, you're best off hiring a TM lawyer for help.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
Intellectual Property Law Attorney
Q: ... will my trademark registration be a complete defense to any action by the holder of Trademark X?
R: My colleagues have already answered your question: "no."
The way to think about it is that the role of the Trademark Office is to determine whether a trademark is registrable [that is, should the mark be placed on the Principal or Supplemental Registers of trademarks -- for all the world to see] whereas the court system determines whether someone's use of Trademark B infringes the rights someone else has already created by his or her use of Trademark A.
In short, the Trademark Office deals with registration issues [only] and the courts deal with infringement issues [almost only].