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Author Topic: Modifications to mark to get around likelihood of confusion  (Read 934 times)

Variusz

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Let's say that a mark named "Bubblegum" is filed for women's clothing. The examiner finds the registered marks "Bubblegum" and also "LA Bubblegum" for similar types of women's clothing and rejects the application on that basis.

How would the mark "Bubblegum by Hot Fashion" (the name of the clothing distributor being Hot Fashion) fare? How about a logo on top of that? What kinds of modifications would be enough to overcome a rejection based on a likelihood of confusion? I realize that a new application would have to be filed for these modified marks.

Thanks in advance for insight into where the lines (or blurred lines) might be with respect to these issues. The names above are not the actual names and are just intended to get the concept across.
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artchain

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Re: Modifications to mark to get around likelihood of confusion
« Reply #1 on: 01-06-17 at 02:51 pm »

Unfortunately there aren't any bright lines in the law...  it's ultimately going to come down to a judgement call. 

However, adding a descriptive phrase or a logo to a conflicting mark will probably not eliminate the confusion.

One factor to take into account is "degree of care" on the part of the purchaser.  In areas where the purchaser is assumed to have special expertise or perform extensive research prior to purchase, similar marks are not likely to cause confusion.

With consumer goods, the degree of care exercised when buying consumer goods is low.  The consumer might just glance at the label, see a familiar word, and assume it's the same brand.  So the examiners generally set a pretty high bar for avoiding confusion.

I generally advise people not to get attached to potential trademarks.  If it looks like there are going to be hurdles getting it approved, pass on it and choose a different mark, unless you have a very strong business reason for a specific mark.

« Last Edit: 01-07-17 at 01:53 pm by artchain »
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This post is provided for information purposes only, and does not constitute legal advice.

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Variusz

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Re: Modifications to mark to get around likelihood of confusion
« Reply #2 on: 01-07-17 at 08:19 am »

Thanks. I was thinking along those lines as well, but it's good to get confirmation that I wasn't missing anything.
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