Can two similar but not identical TMs be registered in a single industry, if both contains generic words?
- posted by: WildDev on 2015-05-23
- tagged:
trademark
- score: 2
Can two similar but not identical Trademarks be registered in a single industry, if both contains generic words?
For example, could I register bell burgers if bell place burgers is already registered? If yes, could the competitor challenge the registration?
Answer 5352
It’s always tough to say whether two trademarks would be found to be in conflict of each other. That’s a human process performed by humans at the Patent and Trademark Office, so the conclusions they draw can be subjective.
But speaking from a purist perspective, I can tell you more or less what they’re looking for.
- Not confusing: The point of trademarks is to avoid consumer confusion, which means if people look at Bell Burgers and associate it with Bell Place Burgers, that’s a problem. By extension, if you opened up a salon, for random example, under the name “Bell Salon,” that probably wouldn’t be confusing to anyone, and you’d be golden.
- Not descriptive: I mention this one because you brought up “generic words.” I’m not sure it’s directly relevant here, but a trademark isn’t valid if it’s descriptive of the service or product being offered. In other words, if you were referring to a burger joint called “The Hamburger Place,” that probably wouldn’t make it through as a trademark, regardless of what other businesses were or were not in place with the name. If the word “Bell” was somehow descriptive or necessary to compete, it wouldn’t be valid.
Finally, it’s important to understand how trademark challenges work.
- Pre-grant: When a trademark examiner looks at your mark, he or she does some searching to find whether it might be confusing with any other relevant marks.
- Post-grant: When a trademark holder comes up and says “Hey, your mark is confusing to consumers, I’m going to sue you if you don’t stop,” they then have to prove that your mark did actually confuse people. It’s no longer a subjective matter of whether people might be confused.
As such, those are two very different questions that you asked. I wouldn’t feel comfortable on a platform such as this jumping up and telling you that the examiner would feel one way or the other, nor that the public would. But hopefully this can lend a bit of insight to help you make a decision.
Of course, as usual, speaking with a trademark attorney might be of assistance.
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