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[schootr]

Hi Everyone,

I have been working for the past year on a new brand of men's sports clothing that will be sold via my website.  I have a name for the new brand (comprised of two words) that I would like to use and I currently have a graphic designer working on my logo.  I have also recently purchased the url for the website (which is the same as my brand name, but with a hyphen between the words) where the items will be sold.

I am located in Asia, which is where the production for my clothing will take place.  I hope to take orders over the internet and ship my product from Asia to other parts of the world, including the United States.  I have not yet registered my trademark in the country in which I live which, by the way, is not yet a signatory to any of the international treaties, such as the Paris Convention.

I have only recently considered the issue of trademarks.  I did a simple search of the USPTO website for my brand name and discovered another trademark (words only) the same as the proposed name for my brand.  This mark belongs to a medical company for products in IC 005. My trademark would be in IC 025.  After conducting internet searches of the trademark registers in Australia and Canada, I see that this medical company has also registered in those counties as well.

I am now seeking some advice as to what I ought to do.  Ideally, I would like to register my brand name in the United States and was wondering whether it would even be worth doing so due to the prior registration.

1.  If there is another name the same as mine but in a completely different Class, does that basically mean there is no chance for me to register?  

2.  Would having a distinct logo help me?  Or is that irrelevant?  

3.  If I am unable to register in the US due to the prior registration, am I committing a trademark infringement by selling goods to persons in the United States via my website?  I will not have a physical presence in the US, although I was hoping that my brand may one day get picked up by a US store (yes, I am a dreamer!).

Any advice or thoughts would be much appreciated.

Many thanks,
Adam

[schootr]

Anyone?  I'd be most grateful for any assistance.

[Lyza]

Don't dispair the lack of response as your entry posted on a Saturday when many here are not reviewing the Board.

It matters less that like marks are assigned to the same class as much as it does whether their goods/services are the same or confusingly similar.  Classes are used to determine filing fees.  The same goods and services are often mentioned in multiple classes.  "Clothing", for instance, is mentioned in 17 different classes of goods and services at the PTO.

What's important is that the goods/services you are offering under your mark are not the same goods/services the medical company is offering under theirs.  If there is no confusion of use in the marketplace, then there should be no problem with using the exact same mark.  If, however, there is another entity already using the same mark with the same goods/services, then you may have a problem.

I am not an attorney so you might want to consider having an attorney order a full, international trademark search from a qualified search entity, such as T&T, CT Corsearch or NameProtect, to make sure your mark is truly available for use and registration.  It's $1K+ well spent when you consider what you will be investing in your mark to get your goods into production and distribution.

[schootr]

Well, I filed an application online so let's see what happens.  Thank you for taking the time to respond, Lyza.