Madison, TN asked in Trademark for Iowa

Q: Does the descriptor in a name trademark matter in regards to confusion or conflict? Within the same TM class.

I would like to use Boundless* Wealth (Boundless is not the actual word*) in class 36 financial, insurance, wealth mgmt. There is 1 other trademark for nearly the same services: Boundless* Financial Group, 5 states away from us, no exclusivity claim to Financial & Group. Is this a conflict? Wealth -vs- Financial Group? Thank you.

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

A: For federal trademark registrations, the existence of a registration for a very similar mark used for similar services will result in a refusal from the USPTO, regardless of whether the prior registrant and the applicant are in different states.

As you note, the portion of the mark that is merely descriptive of the services must be disclaimed. To be registered, the mark must include at least some text or design element that is not disclaimed. Therefore, it is unlikely that you would be able to register the text mark you describe.

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