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Author Topic: Service vs Product likelihood of confusion?  (Read 901 times)

novobarro

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Service vs Product likelihood of confusion?
« on: 02-09-18 at 07:59 pm »

I have a few scenarios.

!. What if there are identical marks, a first mark is registered for a product,  I want to register the same mark for a service that may use the product.  Would there be a likelihood of confusion?

2. Same scenario as above, but I add another word at the end of my mark.  For example, registered mark is Rocket Optical, which is mark for eye glass lenses.  I want to register Rocket Optical Center which is a mark for service for eye exams.

3.  What if there are identical marks, both for identical services.  The registered mark is for example "Cohete Optical Center."  Cohete is, for example, "Rocket" in Spanish.  The mark I want to register is "Rocket Optical Center."
« Last Edit: 02-09-18 at 08:01 pm by novobarro »
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Robert T Nicholson

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Re: Service vs Product likelihood of confusion?
« Reply #1 on: 02-10-18 at 02:23 am »

1. Yes

2. Yes

3. Yes

From your questions, it seems like you're trying to find a way to get around trademark restrictions.  If you are thinking along those lines, there's a good chance that what you are doing will not be approved.

« Last Edit: 02-10-18 at 01:06 pm by artchain »
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novobarro

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Re: Service vs Product likelihood of confusion?
« Reply #2 on: 02-12-18 at 01:21 am »

the client is currently using their mark in a foreign country and wanted to register in the US.  However, found some registered marks similar to the examples I provided.
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Toot Aps Esroh

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Re: Service vs Product likelihood of confusion?
« Reply #3 on: 02-12-18 at 11:50 am »

Second artchain's answers.  In my limited TM experience, the Office will reject a mark application that's basically just an alternative language version of an English-language mark.  Assuming they recognize it as such, I guess.
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novobarro

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Re: Service vs Product likelihood of confusion?
« Reply #4 on: 02-12-18 at 12:23 pm »

Would it matter if the mark is different in terms of design/stylized?

I'm seeing registered marks with designs having identical text in the design and used for the same products/services.
« Last Edit: 02-12-18 at 12:28 pm by novobarro »
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Robert T Nicholson

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Re: Service vs Product likelihood of confusion?
« Reply #5 on: 02-12-18 at 03:38 pm »

Would it matter if the mark is different in terms of design/stylized?

I'm seeing registered marks with designs having identical text in the design and used for the same products/services.

Possibly.  Less weight may be given to text confusion when comparing "special form" marks such as logos with embedded text.  This comes down to a case-by-case evaluation, but it at least opens a door.

However, if the holders of the currently registered trademarks were smart, they would have ALSO registered character marks for the text, in which case your back the the original problem.

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novobarro

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Re: Service vs Product likelihood of confusion?
« Reply #6 on: 02-12-18 at 04:01 pm »

What if registered marks only include typed drawings or design plus words.

Would I have a chance to register a standard character mark with the same words?
Or would I probably only have a chance with some type of design?
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Robert T Nicholson

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Re: Service vs Product likelihood of confusion?
« Reply #7 on: 02-12-18 at 04:20 pm »

I doubt you'd get approval for a character mark. 

But now you're really getting into case specifics.  I think you've got a very small shot at this, under the best of circumstances. 

At this point I think you need to consult a trademark attorney, who can review the specifics of your case and advise you on the best approach.

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novobarro

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Re: Service vs Product likelihood of confusion?
« Reply #8 on: 02-13-18 at 07:22 pm »

Thank you all for the feedback.

Sorry, a few more questions.

What if the registered mark really doesn't have any design and is only characters although it isn't coded as a standard character mark.  I'm thinking that even if my mark includes various design elements, the typed drawing mark would still prevent registration since it lacking any design elements.

Also, for example where the registered mark is Rocket Optical, which is a trademark for eye glass lenses and I want to register Rocket Optical Center which is a service mark for service for eye exams, does it matter that I want to register a service mark and the registered mark is a trademark?  Is there a pretty low chance of registering my service mark?
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Robert T Nicholson

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Re: Service vs Product likelihood of confusion?
« Reply #9 on: 02-14-18 at 12:10 am »

From the general facts you've presented, I think there is significant potential for conflict; the holder of the existing mark may very well oppose this even if it gets past the trademark examiners.

If you were choosing a new mark for a new business, my business advice would be to choose a different mark and avoid this situation.

But I understand that you have a client who is already using their mark in another country, so choosing a different mark is not simple.

At this point, I think you need to invest in a consultation with a trademark attorney to discuss the specifics of your situation and get a realistic assessment of your chances.

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