"Decade" has specifically been registered in the watch category. Our hope is to be able to use the Decade Watch Co name but we've been refused on our first try at registering due to the similarity. Is there anything we can do to be able to use the name? Could we stylize it in a specific font and or add a separate visual element? Or is it just not possible to use the Decade name?
Thank you for your time.
Not only are you not going to be able to register the name for the reasons explained in the Office Action, but if you use the name anyway, it would be trademark infringement. Since you now know about the registration, future infringement would be willful.
I strongly encourage picking a new name, and having a full clearance search performed before investing any resources into the name. 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. Not only does this avoid your present situation, but it also avoids receiving a cease and desist letter.
If you are still adamant about using the mark, regardless of registration or not, it would be prudent for your attorney to contact the registered mark holder to obtain a consent/coexistence agreement. That way you may be able to use the mark in limited fashion without the threat of suit for trademark infringement. You should seek advice from a local IP attorney.
Changing the font won't make any difference, and adding a new design won't help either, as the similarity will continue to exist and the existing user's rights will still be superior to yours since they made it to market before you did.
As my colleague noted, continuing to use a mark you know has been considered too similar for the USPTO to register exposes you to a federal lawsuit for willful trademark infringement.
As my other colleague suggested, you can try to get a "co-exist" agreement, but I frankly don't see how you could create terms sufficient to assure the superior user that your sue won't confuse their customers.
Your best bet is to change your company's name, after consulting with your own TM lawyer so this time you can settle on an available and viable name, and make sure to conduct a professional TM search.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
The first thing to do is to check and see if Decade is being used in commerce. It is one thing to have a mark registered but sometimes registered marks are not being used. I check and the mark does appear to be in use and sold through multiple channels.
Without permission from the owner, you will not be able to use the name Decade for watches. The PTO will not register it and use of the Decade name for watches is trademark infringement. Changing the font will not enable you to use or register the mark.
Next time you choose a name you should contact a trademark attorney in advance, who will provide you an opinion on whether the trademark is available for use and registration. You should not do this yourself.
You are not going to get specific advice on this office action, but it looks like a problem and probably not worth investing in a formal response.
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 KS 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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