Can I use a word that has been trademarked if its combined with another word? Or if I change one letter to a symbol instead?
Thanks in advance!
4 attorney answers
The marks are taken as a whole. The term Goddess is used on hundreds of trademarks. Whether your use poses a problem is something your proper clearance search should reveal.
Before you invest in any trademark make sure you get some legal guidance. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Changing a letter or adding a symbol will not sufficiently change the mark so that if the other entity uses the word goddess for similar goods and services that travel in the same chain of commerce as your goods, then there may be a likelihood of confusion and your use may be infringing. If the word goddess is used for something else that is so remote from your usage, such as for furniture, then you may be okay. You need to consult an IP attorney. Many of us offer free initial consultations why not use one.
It depends. The standard for trademark infringement is likelihood of confusion. Although a complete determination of likelihood of confusion requires examining eight factors, the most important of these factors are the similarity of the trademarks and the relatedness of the goods or services.
A quick search of the US Patent and Trademark Office records reveals numerous trademarks utilizing the word goddess. Thus, it may be possible to add a word to another word that is already used as a trademark, and create a sufficiently large difference in the appearance, sound, meaning, and commercial impression of the overall trademark to avoid a likelihood of confusion. However, whether this is possible, and what will be required to make it possible, depends on the degree to which the goods or services are related. If, for example, goddess is used in connection with gloves, or even other clothing, then it will be more difficult to avoid a likelihood of confusion than if the term is used with, for example, plumbing supplies.
If we assume that the other trademark registration is for clothing, then I do not believe that the addition of a descriptive term, or a minor change to the word itself, would be sufficient to avoid a likelihood of confusion.
You should also consider that there may be other registered and unregistered trademarks that could be cause for concern. Before adopting a trademark, I always recommend a full trademark search and clearance opinion. The search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. If the results are favorable, then you can be reasonably assured that you will not receive a cease and desist letter after having spent thousands of dollars on signage, advertising, etc., making the search very worthwhile.
If the search results are favorable, then an application for federal registration should be promptly filed. This can be done based on a bona fide intention to use the mark, but actual use of the mark is required in order to complete the registration process.
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The touchstone of trade mark law is consumer confusion. The final determination will likely come down to whether consumers are or are likely to be confused by your trade mark and think they are buying or getting a product from another source.
You say that you the word Goddess is pending as a trademark. Are the products at issue similar to your products? Is it a word mark or a stylized usage? Will you be selling your products through the same channels? What classes of goods are they seeking trade mark protection for? These are just some of the factors to consider when determining whether you proposed trade mark might run afoul of another. You should speak with an attorney who has knowledge in this area. Many will provide free consultations before charging fees.
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