We are seeking to name a craft brewery "One Louder Brewing Company" but a search reveals that a brewery has a trademark on one of their beers they have named "One Louder". We are not seeking to name any of our beers One Louder, just our brewery which would include the words "Brewing Company" as well.
Same product, same channel of commerce, identical word = high likllihood of confusion. Tough up hill battle. Talk to a good local trademark attorney. My guess if it makes it past the Trademark Examiner and is published for opposition it will be opposed and you'll loose.
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Identical, if you exclude the generic term, for services closely related to the goods is probably too close.
This answer is written to explain situations which may come up involving intellectual property law issues. It does not give specific legal advice about specific fact situations. If you have a specific fact situation in mind you should ask for professional legal advice about the relevant facts. Seemingly minor changes in facts may change a legal opinion dramatically. Space here does not permit an explanation of all the variables in complex legal areas. Dave Brezina is an Illinois lawyer and his profession is regulated under the authority of the Supreme Court of Illinois. Although he represents clients nationally and internationally, his law practice is performed in Illinois and is not subject to regulation by other states. Dave Brezina is also a Registered Patent Attorney and a patent practice is regulated by the US Patent and Trademark Office a Federal agency and is not subject to regulation by the states. The firm, Ladas & Parry, LLP, has attorneys admitted and offices in at least Illinois, New York and California. Finally, do not post confidential information. There is not an attorney client relationship created simply by correspondence or communication with the author of this site.
Trademark infringement is based on the likelihood that consumers might be confused by the two trademarks. Your consumers might buy their beer, thinking it's your beer, and their consumers might buy yours, thinking it's their beer.
The USPTO won't allow that to happen.
So here's how to choose a viable and available trademark: make a list of several contenders for brand names you like, hire a professional to discuss the advisability of an "intent to use" or "actual use" application, and to do a "knockout" search, and then commission a company like Compumark to do a full scale search. Finally, with your own trademark lawyer, choose a trademark and launch your business.
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The terms "Brewing Company" are descriptive and would be disclaimed anyway, so they really do not help distinguish the mark in the context.
Before you invest in any trademark make sure you get some legal guidance upfront. 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 TX 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-Legal, LLC on the basis of this posting.
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