Vienna, VA asked in Trademark for Virginia

Q: Can I still use the name My Wonderpaw if there is a trademark on Wonderpaw in the same industry?

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2 Lawyer Answers
Robert Kost
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  • Trademarks Lawyer
  • Pittsburgh, PA

A: In theory, the answer is simple: no, you can't use the mark. However, there are other considerations. Let's assume you're referring to the mark at

* Are your goods/services in the same class as the registrant's? In this case, that is: "IC 024. US 042 050. G & S: Bed covers; Pet blankets." Look carefully at the international and US classes (IC 24 and US 42, 50) to determine whether your product could be broadly construed to fall in those classes.

* The mark seems to apply only to the stylized form of "Wonderpaw," but digging deeper into the application, one finds that the literal word itself is also covered.

* The mark is in the Supplemental Register, meaning that the registrant would have to prove validity were there a legal challenge to your use.

Despite all of this, you may want to consider finding a different word for your product. Hope this helps.

Fritz-Howard Raymond Clapp agrees with this answer

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Fritz-Howard Raymond Clapp
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  • Trademarks Lawyer
  • Beverly Hills, CA

A: WonderPaw (in a stylized font) as used for pet blankets is on the Supplemental Register, which provides less protection (exclusivity) than if it were on the Principal Register. Even so, use of the word mark MY WONDERPAW for pet-related goods might be refused registration by the USPTO as "likely to confuse" because it is too similar to this registration.

However, if the mark MY WONDERPAW has been used continuously from a date prior to the registrant's use (1/3/2018), that priority may give you an advantage. You are advised to consult experienced trademark counsel to review the facts and give an opinion.

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