Quote from: mersenne on 03-11-17 at 11:24 PM

I don't think you can reliably get around a known mark merely by excluding their product from your class of goods.  What you're seeing may be the result of an agreement between the parties coming out of an opposition proceeding.  You can find out a lot more about what happened by reading the file histories -- look at the "TSDR" link in TESS.

I think adding a number is slightly better than adding the name of the product because the number is more likely to be perceived as part of the brand name, rather than just saying what the product is.

The large number of other "XYZ" brands for various things means a couple of things: first, you may have an easier time registering "XYZ" for your product, because people already know that XYZ shoes are made by somebody different from XYZ yogurt or XYZ tennis rackets.  But it also means that it won't be as distinctive for you, because there are a bunch of XYZs out there that aren't you.

(I'm assuming that your use of HOT ROD is a hypothetical.  There are a ton of HOT ROD results in a quick search.  So this is a problem with a hypothetical: a lot of what happens and what you can expect depends on what has happened in the past, and among whom.  You may be able to predict what will happen to you better if you look into what happened to the people before you.)

Wow. Thanks.

Yeah, 'hot rod' is not the brand. But similar.

I think what I'm hearing is that:

'Hot Rod Distillery' may not be significantly different enough from Hot Rod - in the mind of consumers it may be related.

I'd like to use:

'Hot Rod 11' - that seems like a unique brand to me. However I could also reverse it to:
'11 Hot Rod' - and thus I think not even be related?

'Monkey 47' is a brand of Gin - surely they couldn't get 'Monkey' as a TM

So frustrating.

Quote from: mersenne on 03-11-17 at 06:00 PM
1. doesn't matter: you're trying to get a trademark in the US, where both companies will sell their products and consumers will see the trademarks.  The question is, will consumers who know Hot Rod Wine think that the same company makes Hot Rod Gin?  (Which is more or less your point 2.)

Adding some words may help sometimes, but it's not a guarantee.  For instance, if the wine company is just "Hot Rod," I'd expect the examiner to say that that company might very well diversify into distilled spirits, so your attempt to register "Hot Rod Spirits" or "Hot Rod Distillery" would be refused.

Wait, are you saying that you just found the Australian red wine company on the internet or something?  If they're not selling in the US and don't have a US trademark, they don't enter the picture at all.

On your "Yellow Banana" hypothetical, if the classes of goods/services are distinct, you probably wouldn't have to add the extra word anyway -- you could have a "Yellow Banana" design studio and a "Yellow Banana" airline.  (And "Yellow Banana" gin, too.)  It's up to the registrant whether to include the extra word in their trademark, but they'd have to be consistent about it, whichever way they picked.

Currently there are 4 live TM for Hot Rod.

The first was the tea company. They've gone after other 'Hot Rod' TM as well, even if in a different class.

Yes there is a Hot Rod TM wine company based in Australia, with a US TM as well. You'll note in their description they're pretty careful:
"Australian red table wine excluding tea or herbal tea flavored wine"

They're trying to stay clear of the tea company.
But in a way they're also limiting themselves? They clearly state they make red wine.

I'm in the gin business. Of course I till wouldn't go after 'Hot Rod' TM because just too much trouble.

'Hot Rod Distillery'
Asian based distillery of Gin excluding wine, tea, dietary supplements and meal replacement bars

That would seem to cover me? But that's why I'm asking.

there's a gin called 'Monkey 47' (out of Germany with a US TM) there are a ton of 'Monkey' TM out there.

I could add a number to mine (Hot Rod 11) - but this seems silly.. why is adding a number any different than adding a descriptor - like Hot Rod Gin?

Thanks for the response.

Sure, my competition for 'Hot Rod' would be the wine company. Tho they clearly state they're 1. Australian 2. make red table wine.

My company is Thai and I make 1. Gin 2. Vodka etc (no wine)

Still, I don't want hassles. So my questions really is:

Will adding a specific word after 'Hot Rod' give me any additional protection:

'Hot Rod Distillery' or 'Hot Rod Spirits'

Surely with common used words: 'Yellow Banana' is not the same as 'Yellow Banana Design' or 'Yellow Banana Airlines'

I think I asked too many questions.

Let's dial it back.

There are currently 4 TM given for:

'Hot Rod'

1. protein-based or granola-based meal replacement bars for medical purposes
2. Australian red table wine excluding tea or herbal tea flavored wine
3. dietary and nutritional supplements in the nature of [ heral ] * herbal * teas
4. Herb Tea

So, I'm afraid if I go after:

'Hot Rod' TM

5. distillery of spirits (gin, vodka, whiskey) excluding wine, tea, dietary supplements and meal replacement bars

I might still get pushback.

If instead I go for a different Trademark:

Hot Rod Distillery
or
Hot Rod Spirits

Will that give me more protection?

I'm an expat based in Thailand.

I'm starting a small craft gin distillery. I will sell regionally but would like to have the option to sell via internet to US and EU. So I'm looking at TM requirements.

Let's call my brand 'Hot Rod Gin'

Hot Rod is a common word, when I search the TESS database I see a number of 'Hot Rod' TM:

1. Hot Rod TM: sell herbal teas
2. Hot Rod TM: is a cooperative for car artists

They both have TM.. The herbal tea company is in active legal action with the cooperative.. ouch.

I guess hypothetically I could seek a TM for 'Hot Rod' under 'liquors' - but I'm sure I would get a fight.


Would I be better off to try to TM something like:

Hot Rod Gin
Hot Rod Distillery
Hot Rod Spirits

Or in a pinch, I could go with something horrible like 'Thai Hot Rod Distillery' or 'Asian Hot Rod Spirits'

I mean, something specific? Should I trademark in US or every country I plan to sell? (that would bankrupt me).

Stuck, eyes bleeding and head about to explode. I don't want to waste my dosh on the application.

Hot Rod Distillery or Hot Rod gin is my first choice

Thanks for any / all replies..