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[TrademarkHEPAneeded]

We are thinking to register a trademark for water treatment product.  If someone has already registered a trademark, ex:   CleanPro, can we register CleanPal for the same type of product.   Does the word ending with Pro/Pal sound same or lead to any confusing?  We are thinking Clean is a generic word, and Pro and Pal can have very different meaning.  Any input is highly appreciated.   Thank You

[TheTrademarkCompany]

This is a difficult question to answer insofar as it draws into question the ultimate subjectivity of trademark law.  You seem to have a very good grasp on the issue - the addition of a distinct elements to the same generic or descriptive term.  Often this will be permissible.  Often it will not.  In regard to your example, it may come down to (1) how diluted and distinctive the common term is on the register and (2) how distinctive the added element is on the register.

In your example "pro" is may be deemed to be laudatory in nature and thus descriptive and, as such, not entitled to much protection.  Altering it to "pal" may be sufficient to distinguish your mark apart from that already registered.  But it may not.

What we like to do in these situations is to look on the register for how many marks include "CleanPro" or some other two to four word term after "clean" so that we can claim the mark is diluted and that the substitution of any other term should thus be entitled to registration.

If CleanPro is the only mark on the register so existing there is a higher likelihood your mark will get rejected as opposed to, for instance, if there is a CleanPro, CleanBee, CleanX, CleanPremium, etc. on the register all for the same goods such that the argument could be made that slight distinctions in the marks would be viewed by consumers as distinguishing between the goods or services provided thereby.

Hope that this manner of analysis helps. Good luck.

/Matthew H. Swyers/

[TrademarkHEPAneeded]

Thank you for your educated and professional input!  I just performed another search on word "clean" (just Using "clean" for example, our trademark using different word), it showed up" 8000 Records(s) found"  60% of them are starting with "Clean". Some of them are in the same Class.     I also do another research on how safe is to use Pal.   Ex:  Search CreditPro vs CreditPal.  Same financial product.  There are almost hundreds of Pro and pal co-exists for same product CAT. Does it mean that the added element (Pal) does provide distinctions?  Do the above research clear the concerns you bought up in previous post.

"it may come down to (1) how diluted and distinctive the common term is on the register and (2) how distinctive the added element is on the register."  - /Matthew H. Swyers/

[TheTrademarkCompany]

As a preliminary matter please note my comments here should be taken not as advice on any particular mark but rather as general information about how one may determine if a mark is clear.  Without a more detailed analysis of the facts and circumstances we simply cannot opine whether a mark is cleared or not.

In regard to your search, it is difficult for me to say it is cleared as I have not looked at the record nor do I know the search terms searched, etc.  Moreover, for us to actually determine or render an opinion on whether a mark is cleared given the subjectivity of the matter we would have to run the clearance report ourselves, see what the other marks are registered for vis-a-vis your proposed use, analyze the strength of those marks as well as other factors, and then render an opinion.

Thanks and I hope that you understand while we can give general comments in this open forum we cannot give specific clearance opinions regarding specific marks.

/Matt Swyers/