Q: How exact does the wording in a word mark trademark have to be for infringement in the same class? Synonyms?
I had an idea for t shirts arranged around a certain slogan phrase under my brand name and logo. But I found the slogan phrase I wanted to use is trademarked for T-shirts. However, a somewhat different phrase using near synonym and past tense would still work for me. How exact does the phrase have to be to retain its word mark protection?
For example if trademark phrase was “it’s not legal”
Would it be ok to use phrase “ it never was legal” ?
A: Trademark infringement occurs when a consumer is likely to be confused as to the origin of a product such that they assume the product comes from the trademark owner. The standard is a likelihood of confusion. The trademark owner would have a pretty good chance of blocking any synonymous phrases based on the likelihood to confuse standard. I wouldn't do it.
A: Look at the "DuPont factors" and analyze whether your mark is confusingly similar to an existing mark. that is the standard for registering a mark with the USPTO. If you're not planning on registering a mark, look for the "Sleekcraft" factors used in the 9th Circuit. I suggest getting a freedom to operate opinion (clearance opinion) from a lawyer. Good luck!
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