Q: I have a trademark for the same name and same class but different goods
I have a trademark for the same name and same class but different goods, the trademark is named "RapidEffects" it's for teeth whitening kits, and teeth whitening gel. The current registered trademark is for "Rapid Effects" it's for Conditioners; Hair care preparations; Hair color; Hair shampoo; Hair straightening preparations; Hair styling preparations.
Will my teeth whitening trademark be disapproved or possible other problems because of similar goods?
A: It may be wise to be more creative to avoid possible IP infringement claims.
More details are necessary to provide a professional analysis of your issue. The best first step is an Initial Consultation with an Attorney. You can read more about me, my credentials, awards, honors, testimonials, and media appearances/ publications on my law practice website, www.AEesq.com. I practice law in CA, NY, MA, and DC in the following areas of law: Business & Contracts, Criminal Defense, Divorce & Child Custody, and Education Law. This answer does not constitute legal advice; make any predictions, guarantees, or warranties; or create any Attorney-Client relationship.
A: In examining a Trademark, the USPTO determines whether the use of the mark to identify your goods would confuse the public that they are made by the same company which has the same mark.
The Class, as you noticed can be very broad. However, in applying for a trademark you will describe EXACTLY what the mark is for. When searching through the class of goods, if there is a selection which describes your goods, then it likely should be selected. However, if it is not, for example software which is designed specifically to perform a task which isn't in the list, when you process your application, you can tell the USPTO what it is and they will supply an examiner's amendment to your description. This can result in modest fees.
Trademark law is very complicated and can result in the loss of your mark or more importantly result in a lawsuit for trademark infringement.
You should get an attorney to file the mark for you. Think of the attorney's fees as an investment to prevent actionable mistakes you could make if you tried to register the mark yourself.
THIS IS FOR EDUCATIONAL PURPOSES ONLY. IT IS NOT INTENDED TO CREATE AN ATTORNEY-CLIENT REALATIONSHIP. YOU SHOULD CONSULT YOUR OWN ATTORNEY.
A: This comes down to a factual determination by a "reasonable consumer" objective standard on whether the two marks are confusingly similar. The same name and class is strongly indicative of consumer confusion, however toothcare vs. haircare is obviously distinct. To be completely safe, since you know of the other brand and you'll potentially be in the same market, my recommendation is that you change the name, come up with something different that is not taken. That said, if you had the name first and can prove that then you may want to send the other company a cease and desist letter so that you can use the name or come up with another agreement with them that you both can use it provided you don't step on each other's territory (I mean that figuratively and literally).
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