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TM questions from new business owner
Posted by Anonymous . updated on 2/26/2009
great forum. I have a few questions that I was hoping someone here could help me out with. I am new business owner and we would like to trademark our name as it is an outdoor clothing/equipment company. I'll try to make the questions as simple as I can to save read time and space.
1. First, our name has been trademarked by another company within the last month and a half (great feeling  )). However, they have the name registered for totally different classes of goods than what we will be applying for. They have also registered it as a standard character mark. Will this present much of a problem?
2. Secondly, their application is filed as 1B, which as a trademark lawyer told me was an "intent to use" category. Will it be easier for us, of course depending on the answer to the first question, to file it as a "used in commerce" application (we already have..oops)? Will they (the other company) have leeway if they wanted to file for the same classes as us down the line?
3. Thirdly, our mark(s) would be three. One logo, one name, and one logo/name combo...think NIKE. Is there anyway to consolidate this to just include the logo/name combo on the application yet have them be usable/trade markable if separated, say on our t-shirts? If not, will we have file three separate applications and spend three times the money?
4. Lastly, the name he hope to trademark is stylized and we want to keep it that way if we have a better chance of getting it trademarked. We are ok with using it in that exact style if that is all we can get, for now. Would it be better to try and trademark it in standard character right off the bat, knowing it's been done with other good classes or should we apply using the stylized mark? We will eventually want to change it for different designs.
I do have more questions but I think these are the most important. I really appreciate you taking the time to look this over and thanks in advance for your responses.
Jake
Answers (1)
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JSonnab...
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Quote from: Jake2185 on 07-03-08 at 07:52 pm 1. First, our name has been trademarked by another company within the last month and a half (great feeling )). However, they have the name registered for totally different classes of goods than what we will be applying for. They have also registered it as a standard character mark. Will this present much of a problem?
Maybe. Do you think consumers are likely to confuse the two entities? Do you think the party might think so?
2. Secondly, their application is filed as 1B, which as a trademark lawyer told me was an "intent to use" category. Will it be easier for us, of course depending on the answer to the first question, to file it as a "used in commerce" application (we already have..oops)? Will they (the other company) have leeway if they wanted to file for the same classes as us down the line?
The real issue here is, if the other company hasn't begun use and you have, you may be able to oppose their registration, or better yet, convince them to drop the mark and application without fighting out an opposition.
3. Thirdly, our mark(s) would be three. One logo, one name, and one logo/name combo...think NIKE. Is there anyway to consolidate this to just include the logo/name combo on the application yet have them be usable/trade markable if separated, say on our t-shirts? If not, will we have file three separate applications and spend three times the money?
That's a bit of a complicated question, actually. The short answer is, if you use the brand elements in a "composite" form (i.e., together), then you can file an application on that composite form and get a good deal of protection for the individual elements in the process. Ideally, you would file for registration of each branding element as you actually use it (i.e., alone and in combination with other elements).
4. Lastly, the name he hope to trademark is stylized and we want to keep it that way if we have a better chance of getting it trademarked. We are ok with using it in that exact style if that is all we can get, for now. Would it be better to try and trademark it in standard character right off the bat, knowing it's been done with other good classes or should we apply using the stylized mark? We will eventually want to change it for different designs.
To be clear, you won't be "trademarking" anything, you'll be registering a trademark. Whether or not you'll have a better chance of registering a stylized form of the mark over a word mark version depends on how stylized "stylized" is.
- Jeff
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