Q: I did a TESS search for a trademark filing. Found one live match but their word mark is longer than my name. Is that ok?
My business name is The Business Clinic and the only live trademark I could find is listed as "THE BUSINESS + CLINIC RX FOR SUCCESS". There have been other "The Business Clinic" filings but all are now shown as Dead. Before I do the filing, however, I'd appreciate knowing whether this longer work mark covers my proposed use.
The active registration for THE BUSINESS + CLINIC RX FOR SUCCESS (stylized) would probably preclude the proposed registration for THE BUSINESS CLINIC as confusingly similar.
But even if that registration was not active, it is likely that THE BUSINESS CLINIC would be refused as "merely descriptive" of the services.
I would recommend adopting a more distinctive mark or perhaps adding design elements to the text.
Marcos Garciaacosta agrees with this answer
A: You are probably at some risk. You could receive a rejection based on the mark you found, but this will depend on how similar the services are (additionally, in this case, the nature of the particular mark you found has several complicating factors). You could also receive a rejection for descriptiveness, but this will depend on what type of services you are applying your mark to. This one is complicated, so you should definitely consult with a trademark attorney to discuss the details of your mark.
A: If the mark is confusingly similar to your mark it will most likely be blocked from being registered with the USPTO. The USPTO will not allow the same or similar marks in the same class of goods and services to register.
The fact that the live trademark you found has a longer word mark than your proposed name should not necessarily be a problem. Trademarks are typically evaluated on a case-by-case basis, taking into account a variety of factors such as the similarity of the goods/services, the channels of trade, and the overall likelihood of confusion. In this case, you will need to carefully evaluate whether there is a likelihood of confusion between your proposed name, "The Business Clinic," and the live trademark "THE BUSINESS + CLINIC RX FOR SUCCESS," particularly in the context of the goods/services you will be providing.
It is recommended that you consult with a trademark attorney or a trademark professional to conduct a comprehensive trademark search and to provide an opinion on the likelihood of confusion. They will be able to provide you with guidance on whether your proposed name is likely to infringe on the existing trademark, and whether it is advisable to proceed with the filing.
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