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Author Topic: "confusingly similar mark" question  (Read 1787 times)

hutch

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"confusingly similar mark" question
« on: 08-19-08 at 05:42 pm »

I have a registered business name trademark but have been seeing a lot of companies with similar...yet not exact names. Enough that it has the potential to affect an online search.

I have three questions. For privacy sake...pretend my registered name is Bella Bambino Clothing.

1. Someone started a line called La Bella Bambino Clothing. Same service, same product. Does one word make a difference or do they have enough of a  "confusingly similar" name to be in violation of my trademark?

2. What if someone starts a company called Belle Bambino Clothing (even though it doesn't make any sense since it's a combination of French AND Italian  :-\) and my registered mark is Bella Bambino Clothing. Is this similar enough to be a violation?

3. If I registered a name in say...Italian, do I also have the right to the English translation? For example, my pretend company is Bella Bambino Clothing..."clothing for your beautiful baby" and then someone starts a Beautiful Baby Clothing company line. Do I need to register TWO names...one in Italian (which has the English translation of Beautiful Baby on my certificate of registration) AND Beautiful Baby Clothing?

I really appreciate the help!
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CriterionD

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Re: "confusingly similar mark" question
« Reply #1 on: 08-22-08 at 06:56 pm »

I copy and paste this reply often...

Trademark (and Servicemark) infringement is determined on a "likelihood of confusion" basis. The issue at hand is whether relevant consumers would be likely to associate the goods or services of one party with those of another party as a result of trademark usage. A variety of factors may be examined when analyzing a trademark infringement issue, the most notable of which are: the similarity - visual and phonetical - of any marks at issue; and the commercial relationship between the goods or services described by any marks at issue.

To address question #3 - You probably want to register any name you plan on using - translations are besides the point.  "clothing for your beautiful baby," however, in English, would be a weak mark in the US at best since it is rather "descriptive" if not downright generic.  A trademark is used for the purpose of distinctively identifying a good or serivce.  Logic follows that you can't call an apple an Apple and expect to be "distinctively" identifying the source or type of the apple.
 



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