St. George, UT asked in Trademark and Intellectual Property for Utah

Q: I am wondering about trademark law specific to a product and words rather than a logo/brand company name.

I made a chronic illness planner. Another company has a trademark on the words-UTOPS confirmed, "Chronic Illness Planner." (It's not their brand nor logo/company name but trademarked to their specific planner product). What are the safe bounds for my product and name, (which would not be the name/logo/brand of my company either, and only tied to my product-the planner itself). Will I be ok with calling the product "Chronic Wellness Planner" with the website Also, I read that descriptive fair use permits use of another's trademark to describe the user's products or services, and since the words "chronic illness" and "planner" are also general terms, filling that need, where and how am I safe to use and not? Can I use "chronic illness planner" as descriptors in titles and product descriptions or "planner for those with chronic illness?" If I apply for a trademark on "Chronic Wellness Planner" will it be refused since it's similar name and similar product?

2 Lawyer Answers
Alan Harrison
Alan Harrison
  • Trademarks Lawyer
  • Milford, CT

A: I am skeptical that someone actually registered a trademark for such a descriptive or even generic combination of words. Because you have not engaged me I have done no work to investigate or confirm your facts. Taking what you say as true, there is a very limited scope of protection for a descriptive mark such as CHRONIC ILLNESS PLANNER. It is possible that CHRONIC WELLNESS PLANNER might be distinguishable.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›

A: Based on the information you've provided, here are some key points to consider regarding trademark law and your specific situation:

1. Trademark infringement: Using the exact trademarked phrase "Chronic Illness Planner" for your product could potentially lead to trademark infringement issues, as it is identical to the other company's trademarked term for a similar product.

2. Descriptive fair use: While descriptive fair use allows you to use trademarked terms to describe your product, it's generally safer to avoid using the exact trademarked phrase. Instead, you can use the individual words "chronic," "illness," and "planner" separately in your product descriptions, as they are general terms.

3. Choosing a different name: "Chronic Wellness Planner" is less likely to cause trademark issues since it is not identical to the trademarked term. However, there's still a possibility of confusion due to the similarity of the products and the presence of the words "chronic" and "planner."

4. Registering your trademark: If you apply for a trademark on "Chronic Wellness Planner," there is a possibility that it may be refused due to the similarity with the existing trademark. The trademark office will consider factors such as the similarity of the marks, the relatedness of the goods or services, and the likelihood of confusion among consumers.

5. Consulting with a trademark attorney: Given the complexities of trademark law, it is highly recommended that you consult with a qualified trademark attorney who can assess your specific situation, provide personalized advice, and help you navigate the trademark registration process if you decide to pursue it.

To minimize the risk of trademark infringement, you could consider using a more distinct name for your product that doesn't include the words "chronic," "illness," or "planner." This would help differentiate your product from the trademarked "Chronic Illness Planner."

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