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What to Avoid When Coming Up With a Trademark

There are several factors to take in consideration when looking to register a trademark. By keeping these in mind, you can prevent a rejection. Additionally, it will also help to ensure that your trademark does not run the risk of infringing upon the rights of other trademark owners, and putting yourself in legal danger.

  • Similar names or logos in the same market

You cannot expect your trademark to be registrable if it has the same name, too similar of a name, or has the same connotation as an already established and famous trademark, especially when you intend on selling the same goods, or providing the same service as the senior mark.

  • Similar names or logos in related markets

Even if not in the same market, it is best to tread with caution if your trademark is similar to another trademark that may not yet be selling the same goods, but may conceivably grow into the market you intend to sell or provide a service in. For example, a company that starts selling shoes will likely grow into selling sportswear and other types of clothing. Even if your trademarks are not selling the same kinds of goods, be cautious if your trademark name is similar to another one that is in a similar or closely related market.

  • Deceptive names for products or services

Not only is it a bad business strategy, but naming your product or services deceptively can prevent a trademark registry on the grounds of confusing the public. Trademark names can be unique and creators should use their creative expression, but avoid using specific language when the image it conjures in the mind of the public is not equivalent or close to the goods you sell or the services you provide.

  • Bad faith intention to copy

While there is nothing wrong with a little inspiration, you should not think of coming up with names or logos for your business or product if you intend on imitating the product or service names of already established trademarks. Trademarks or names intended to parody another mark can be allowed if there is sufficient difference in the name, or the satirical/spoofing intention is made obvious enough, but you may still face legal backlash.

  • Your trademark name is too weak

Names that are merely a surname, descriptive, or geographic may not qualify for trademark registration if they have not acquired distinctiveness, or recognition among the public. This is often because these commonly used names (surnames, descriptions, geographic locations) are so broadly used that they can confuse the public unless there is acquired distinctiveness.

The single uniting aspect of all these factors is the likelihood for causing confusion among the public. When coming up with a trademark name or logo, you should keep in mind how likely it is for the public to confuse your trademark with another business or product. As likelihood of confusion is often the “core element” in infringement cases, by avoiding these things you can ensure that your trademark is eligible for registry and poses no legal threat to you in the future. While these factors are important to consider, there is leeway in the freedom of expression granted to creators, as trademarks are only protected to the extent necessary to prevent confusion among the public. When dealing with likelihood of confusion, always keep in mind not only whether there is any suspected confusion, but the degree to which it is implicated.

Written by: David Sacasa Ⓒ 2021 Alcoba Law Group P.A.
Picture Credits: Miri Paez Bolet.
Reviewed by: Ruben Alcoba

References:  Kirkpatrick, R. L. (2015). Likelihood of confusion in trademark law. New York City, NY: Practising Law Institute.

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