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[cromag]

Hello. I have scoured the USPTO website for hours trying to get all my questions answered. I was very successful however I still have a few questions left unanswered.

Can I get some help with these few important questions from the Intelproplaw collective?

*My goal is to prevent anyone from in the USA from using my company name AdustBunny and hopefully not using "dustBunny" or "AddustBunny " in any type of business.

My Questions:

• If the name "dustBunny" currently existed, and there were no other issues, would I be able to register "AdustBunny"?
  
• Should I register all three variations (AdustBunny, dustBunny, AddustBunny) or will they be too similar and not get approved by others anyway?
  
• Do I have to register my complete company name, AdustBunny Mortgage or can I just register AdustBunny to prevent people from using the AdustBunny name in any way?  
  
• I plan to expand my business from loan brokerage to Loan Brokerage and Correspondent Lending. In planning for the future, can I have a broad initial description such as Mortgage Brokerage and Lending Services? Can I even get away with Mortgage Brokerage, Lending and Real Estate Services?
  
• If I register trademark "AdustBunny" as a Mortgage Brokerage and Lending Services Company, will someone, at a later date, without impunity, be able to use a similar name such as "AdustBunny Home Loans" or how about "AdustBunny Auto Finance" or even "AdustBunny Lawnmowers"
  
• Is there a RUSH option to have the 'NAME' approved for registration quicker, like the online service companies advertise 48hrs. (I would like to incorporate but don't want to spend all the money unless the name is a good candidate for registering a federal trademark.
  
  Most sincerely,
  
  Cro
  
  PS the names of the company have obviously been altered for privacy protection.
  
  Thanks for reading!

[JSonnabend]

• If the name "dustBunny" currently existed, and there were no other issues, would I be able to register "AdustBunny"?

It depends on how "dustBunny" was being used and how you intended to use it.  Identical marks can co-exist so long as the goods/services they cover are sufficiently different (e.g., "Delta" for airlines and for faucets and "Domino(s)" for sugar and pizza).  On the other hand, if the services are too similar, a later-filed/later-used mark would not be permitted.

• Should I register all three variations (AdustBunny, dustBunny, AddustBunny) or will they be too similar and not get approved by others anyway?

Ideally, you should register the mark in all the forms in which you use it.  You will not be permitted to register the mark in any unused form, but you can seek registration for less than all the forms used.  A registration for "AdustBunny" is effectively the same as a registration for "AddustBunny".

• Do I have to register my complete company name, AdustBunny Mortgage or can I just register AdustBunny to prevent people from using the AdustBunny name in any way?

You can seek registration in either form, although you'd likely have to disclaim "Mortgage", assuming that's what your company did.

• I plan to expand my business from loan brokerage to Loan Brokerage and Correspondent Lending. In planning for the future, can I have a broad initial description such as Mortgage Brokerage and Lending Services? Can I even get away with Mortgage Brokerage, Lending and Real Estate Services?

You can only register the mark for services you are actually providing (under the mark), although you can effectively reserve your registration for intended uses for roughly four years from filing.

• If I register trademark "AdustBunny" as a Mortgage Brokerage and Lending Services Company, will someone, at a later date, without impunity, be able to use a similar name such as "AdustBunny Home Loans" or how about "AdustBunny Auto Finance" or even "AdustBunny Lawnmowers"

Later adopters of the mark will not be able to use it nor register it for confusingly similar services.  Under your hypothetical, the finance related uses are likely stoppable, but not the lawnmowers.

• Is there a RUSH option to have the 'NAME' approved for registration quicker, like the online service companies advertise 48hrs. (I would like to incorporate but don't want to spend all the money unless the name is a good candidate for registering a federal trademark.

First, a company name is not the same as a trademark, per se, although company names can be used as marks.  For instance, United Airlines is a trademark, but the company is UAL, which is not a trademark.  By contrast, Delta is both the mark and the company name.  The PTO doesn't offer any expedited registration absent compelling circumstances, which you likely do not have.

- Jeff

[cromag]

Thank you very much Jeff! Those answers are excellent and very helpful. I have one all important question that I am hoping to get a thumbs up reply to.

Doing a search with the PTO found the company "dustbunny" as a former trademark with logo. However the company is shown as dead as of may 2005.

The company "dustbunny" (same owner as the dead trademark) was named in a SEC lawsuit for inflating the value of their company and the defendant also tried to liquidate 500,000 shares during the class period.

Doing a PTO search using TESS has found the name DEAD 2005-05-07 - Canceled Section 8 (6-year)

Also the web domain "dustbunny.com" is currently being used as a portal for all types of financial links to other sites in a very broad financial range. (banking, insurance, credit, stock market, 401k etc)

A google search of "dustbunny mortgage" found that a company with such name was merged with Money Financial corp in 2000.

So since the TESS search shows the "dustbunny" trademark as dead and no use of "Adustbunny" is able to be found other than a generic financial website portal for "dustbunny.com", would I stand a chance of successfully registering the name "Adustbunny" as a Mortgage and financial services registered trademark?

Thank you for reading.

[JSonnabend]

Unfortunately, I can't give you an opinion on hypotheticals.  What I can tell you is:

(a) The fact that "Mark A" is not registered doesn't really answer whether your mark will be registerable or not, as the standard is likelihood of confusion, not identity of marks.

(b) In all the years I've been doing this, I have yet to come across a client who has done a proper TESS search on his or her own, despite the fact that most tell me they have.

- Jeff

[Shelby Dover]

So you can register multiple forms of the word under the same mark? For example, if I'm wanting to trademark an adjective and a noun for a process, like stapled and staples, I would be able to register both forms of the word under the same trademark? How would I be able to do that?

[JSonnabend]

So you can register multiple forms of the word under the same mark? For example, if I'm wanting to trademark an adjective and a noun for a process, like stapled and staples, I would be able to register both forms of the word under the same trademark? How would I be able to do that?

The short answer is, no, you can't file multiple marks in the same application.

The slightly longer answer is: the registration will cover only the mark as filed.  If you are not using the mark in substantially the same way as the mark appears in the application, you won't be able to get your registration (you'll fail on the "use in commerce" requirement).  Thus, if you are using two "marks" together in a unitary fashion, they may be considered a single mark and filed together.  If they are not used together in a unitary fashion, then they are two different marks and must be filed separately.

- Jeff