Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[MyCompany]

I have a business name that *may* be considered "confusingly similar" to another business's name (which is trademarked).

I'm going to submit a trademark registration application with the USPTO this week, and I'm wondering what degree of protection my trademark will have if they do indeed approve my registration.

Can another business still sue for infringement, even though the USPTO approved my trademark?

In other words, if two business's have trademarks, can one still sue the other for trademark infringement?

While I'm not going to divulge my business name, it's basically similar to this example:

My business:  Bed Mart
Competitor's business:  Mattress Mart

Thanks in advance!

[Isaac]

Your question implies that companies have a trademark because they have registered.  That is incorrect.
You have a trademark based on your usage of a term in commerce and not because of registration.

Registered trademarks can still conflict and if marks are confusingly similar or have a likelihood of confusion, the junior mark holder is the loser.
Registered marks ought to have a somewhat less likely chance of being confused because they have been examined by the PTO for that issue.  But if the PTO misses something, your registration does not help you.

Marks can be made incontestable on certain grounds after a period of 5 years of registration and use.

[JSonnabend]

Isaac is correct in his advice.  I'll add two points.

One, even after registration, a senior user (i.e., one who was using a mark before you began use or registration of yours) can ask the PTO to cancel your registration.  The PTO does not search for unregistered senior uses, so the registration doesn't address that at all.

Two, regardless of the incontestible or contestable status of your mark, a senior user will always have rights superior to yours and will be able to stop you from using your mark in any market where your use is junior to its use.

The long and the short of it is: if you are seeking tm registration for defensive purposes, you're likely barking up the wrong tree.

- Jeff