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[Pabs82]

LETS SEE WHO CAN ANSWER THIS QUESTION...I AM A START UP BUSINESS AND UNFORTUNATLEY DONT HAVE THE $$ TO GET A LAWYER ON THIS ONE BUT FILED FOR A TRADEMARK.

IF A COMPANY HAS A NAME SIMILAR TO MINE, EX.
MINE IS ROK HARD CO. (CLOTHING LINE) AND THERE IS A BUSINESS TRADEMARKED ROCK HARD (GLASSWARE, RESTAURANT, CLOTHING). DOES THAT IN ANYWAY CONFLICT W/ MY BRAND?

PLEASE LET ME KNOW!!!

[lyza2855]

Any one of the professionals that participate in this blog will be able to answer your question.  And before Jeff corrects you, understand that you don't "file for a trademark."  You file an application to register a mark you are using or intend to use to sell goods and/or services under that name or design.  

Off-topic, and forgive me for being blunt but, YOUR BRAND IS YOUR BUSINESS!!!  You can't afford NOT to have experienced counsel help you.  I've assisted hundreds of times with applications incorrectly or inadequately filed directly by the applicant that not only waste the filing fees and early filing date, but ended up providing the applicant with little or no actual protection.  Could have been avoided by using an experienced IP attorney and working out a payment plan.  

This may sound callus (sp?) but it breaks my heart to see small business owners take their intellectual property so lightly.  There is an accepted 2-year learning curve just to be considered a moderately experienced intellectual property SECRETARY, for pete sake.  Why do so many think IP prosecutuion is easy when it takes years of experience to be able to navigate the mine field that is the USPTO?!  End of rant.

Regarding your question, the other party's mark, if similar in sight, sound and meaning, filed for similar goods/services, would probably be cited against yours in a 2(d) office action refusal, which would necessitate filing a response with substantive argument, and possibly exhibits, that you could not do yourself.

Sorry, I'm sick and having a bad day.

[clarklawyer]

Sorry, I'm sick and having a bad day.

You answer well on a bad day.   Hope your condition does not drag on into the weekend.

[lyza2855]

Thanks, Isaac.  It's Mononucleosis and it's been dragging on for almost two months.  Thanks for the good thoughts.

[Pablo]

My name though is not similar in sight and i would be 0 competition to the restaurant brand. I am a surf/skate clothing brand..they are a restaurant..wheres the conflict?

[clarklawyer]

My name though is not similar in sight and i would be 0 competition to the restaurant brand. I am a surf/skate clothing brand..they are a restaurant..wheres the conflict?

Nobody here is going to do the homework necessary to provide an opinion of whether there is an actual likelihood of confusion that a business person ought to rely on.   For one thing you don't provide nearly enough detail.  Further even if we did the homework on your hypothetical mark, the analysis would likely have very limited applicability to the real marks in question.

A likelihood of confusion might arise partly because the marks sound identical which could be an issue in some advertising channels.   While the fact that you are labeling non competitive goods and services is an argument in your favor, that is only one factor in a multi-factor analysis.

My answer may have a little more jargon in it, but the substance was pretty much covered by 2855's response.  

[JSonnabend]

My answer may have a little more jargon in it, but the substance was pretty much covered by 2855's response.

That's Ms. 2855 to you, bub.

I agree with Lyza and Isaac entirely.  As for cost, my practice focuses almost entirely on individuals and start-up business, and my rates reflect that.  As Lyza (nee, Ms. 2855) said, f you don't have the resources to properly clear and protect your brand, you're taking about as big a risk as you possibly can in developing it.

- Jeff

[lyza2855]

Go ahead and fight over me, Boys!  Many thanks to both of you for your sweet talk.  Frankly, "Lyza" is good enough.

Lyza

[Pablo Palatnik]

Ok. Im going to make this case very clear and i hope I have a clear answer. My company's name is ROKBOTTOM CO. (one word rokbottom) We are a skate/surf apparel company entering the skateboard industry as we will have skateboards soon as well. Trademark Serial Number: 78930503 (class 025: clothing).

The brand that MIGHT be in conflict that i saw potential for and need the advise of a professional is ROCK BOTTOM ( 75234316) which is a restaurant which has classified itself in many classes including 025: clothing.

My company name is spelled differently, is one word, and has a VERY distinct logo and a vVERY distinct industry (Restaurant / SURF/SKATE CLOTHING).

I dont see my brand causing consumer confusion. What is your take on this? Should I be concerend? An attorney cant tell me in advance whats going to happen so what actions should I take or maybe consider?

[patentpilot]

As said earlier on another subject, no attorney will be able to provide a guarantee; only his best judgement (that's what we get paid to do) based upon the facts presented.  And, I'd be surprised if you got that opinion for free on this forum; it's for education and not legal advice.
Anyway, a couple of observations.  It would not be unheard of for a restaurant to offer clothing.  (Hard Rock Cafe comes to mind.)  And, there's a Rock Bottom Golf that sells clothing.  Finally, just because they look different doesn't mean that sounding alike won't lead to a likelyhood of confusion.  (There's an old pickle case about that.)

[lyza2855]

Pablo,

I am going to assume you wrote your most recent entry prior to our phone conversation.

The bottomline is that the attorneys have all answered your questions as they relate to a trademark application/registration and the registration process.  If you don't like what you hear, then you must ask new questions.  When more than one professional gives you the same answer to the same question, yet you are not satisfied, then you are not asking the question your really want to ask.  They have answered your questions related to the trademark application process, yet you are not satisfied.  

Therefore, and based on what you and I discussed on the phone, it my opinion that what you want is for someone here to give you business advice as to whether or not you should proceed in your business by using this mark as a brand.  As I stated in our conversation, as Bill said, that's not what this blog is for.  No one can guarantee that you will not encounter additional problems if you choose to go ahead and use your brand.

Your and your partner's responsibility as business owners is to make business decisions and assess your own risks.  Attorneys give advice based on the law and legal rights.  They won't tell you which risks to take or how to run your business.

You made the decision to file a trademark application yourself.  Multiple attorneys have already advised you that there is nothing more to be done with your application until it enters examination, which will be in about 6 months.  A trademark search at this stage would give you additional criteria to help you make your decision about whether or not to proceed in your business using that brand, but it will be your decision, not theirs.  We cannot say it any more plainly.  

[clarklawyer]

I dont see my brand causing consumer confusion. What is your take on this? Should I be concerend? An attorney cant tell me in advance whats going to happen so what actions should I take or maybe consider?

Have a confidential discussion with an attorney in a situation where the attorney can ask you questions to fill in the gaps between what you think you need to tell and what the attorney needs to know.   In that situation, you will get the kind of information you need to understand your risks.   You cannot reasonably expect to get that answer in a forum where you are instructed to "not disclose any details of your specific circumstance"

Some people like to do things without an attorney, but others just want to do things without an attorney's fee.  Some things cannot be done in the latter way.

[lyza2855]

Isaac,

Can you email me your contact information off-list to lyza2855@gmail.com.  I will then send you my business email and contact information.  Many thanks.

Lyza