What if someone else filed for a similar trademark first?
I can’t tell you all the reasons why people delay filing a trademark application. Perhaps they only recently came up with a new name for their product. Maybe they’ve been using a mark for a long time, but never bothered to apply. Whatever the reason may be, you might now be thinking of applying. There is only one problem. Others have already applied for similar trademarks. What are your options if you wish to file for a similar trademark?
Need guidance on registering a trademark? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you protect your trademark rights.
How do you search for similar trademarks?
You can search for similar trademarks by checking the USPTO search site. As you review search results, keep in mind that marks do not need to be identical in order to block your application. The USPTO employs a standard called likelihood of confusion. Here are examples of confusable trademarks.
Is the similar trademark filing live or dead?
Suppose you found a filing for a similar trademark. Check the status to see if it is live or dead. Dead trademark filings will not block your application.
How close are the trademarks in sound, appearance and meaning?
In comparing the marks themselves, compare the respective sounds, appearances and meanings. How similar is the spelling of your mark? The more similar these factors are, the greater the risk of receiving a likelihood of confusion rejection.
How related are the goods or services?
Compare your goods or services to those identified in the trademark registration or application. Are your goods or services in the same class? Even if the classes are different, how related are the respective products? For example, food and drinks are highly related to restaurant services. Downloadable mobile apps are related to non-downloadable software (e.g., SAAS).
An experienced trademark attorney can perform a knockout search or provide some guidance on what types of goods or services may be related.
Should you file for a similar trademark when someone else already applied first?
Suppose you find a live registration or application for a mark that is arguably similar to your desired trademark. The respective spellings are similar. Their products are related to yours. Should you still file an application for a similar trademark?
The answer can get complicated. In fact, there might not be a single answer as you may have multiple options. Initially, you will want to check if your earliest date of first use in commerce is earlier than the priority date of the blocking trademark filing. If so, your options may be potentially greater.
Assuming you have trademark priority, you may have the option to file a cancellation if the registration is less than five years old. For a pending application, you can file an opposition during the publication period. A trademark cancellation or opposition can be a major undertaking. These TTAB proceedings entail an adversarial mini-litigation between you and the application/registration owner.
Is coexistence an option?
Before filing an opposition or cancellation, consider whether a coexistence agreement would make sense. Consent agreements are given great weight by the USPTO, but they work in situations where the trademarks are not very close. If you are dealing with a highly similar trademark, then it might not make sense to file a consent agreement.
Of course, coexistence requires the other side’s cooperation. If you cannot get them to sign a consent agreement, then you may need to apply leverage. An experienced trademark attorney may be able to help you determine how much leverage you will be able to exert.
Should file for a similar trademark when you did not use it first?
If the use of your mark is not earlier than the other side’s priority date, you will not be able to challenge their trademark filing on the basis of priority. Some other options to consider may be expungement or reexamination if you are dealing with a registered trademark.
These challenges require a deeper dive into the prosecution of the other side’s trademark filings. Experienced trademark attorneys ought to be able to identify if any vulnerabilities can leave the door open for these challenges.
Need to file a similar trademark application?
Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to request a flat rate estimate for guidance on how to file for a similar trademark.
