• Why should I monitor other trademark applications?
  

  Why should I monitor other trademark applications?

  Trademark owners are responsible for enforcing their own trademark rights, whereas the USPTO is responsible only for assessing applications and registering marks. When a USPTO examiner is reviewing trademark applications, he or she may not think that a mark you think is similar to yours is similar enough to be refused--and that can lead to diminishment of your own trademark rights.

  If you are monitoring new applications, and you feel that the mark in a pending trademark application could be confused with your trademark, you can dispute registration of the other mark through the Trademark Trial and Appeal Board (TTAB), which is a branch of the USPTO.

  
• What does the USPTO consider a trademark conflict?
  

  What does the USPTO consider a trademark conflict?

  A conflict exists when one trademark is confusingly similar to another trademark already registered. The principal factors used to determine if there would be a chance of confusion include:

  • The similarity of the marks
  • The relationship between the products and/or services sold and/or offered under each mark

  To be considered a conflict, two trademarks do not have to be identical to one another and the products ("goods") and/or services associated with the marks do not have to be the same. It may be enough that the trademarks are in some way similar and the products and/or services related in some way.

  In some cases, trademarks that may seem similar can coexist if they are unlikely to confuse a consumer. For example, two trademarks that may seem similar can both be allowed if they are used for unrelated products or services, and are therefore unlikely to cause consumer confusion. Here are some examples:

  • "Acme Jeans Co." used for clothing and "Acme Computers" used for laptops may both be registered trademarks (and both may be registered and/or used in commerce in their respective areas); but
  • "Acme Computers" and "Acme Technology," both used for computer software, are unlikely to both be registered because consumers may confuse one for the other. The first user may also sue the second for infringement, especially if the first user has federally registered the mark.
  • "Birdie" used for soaps and "Birdie" used for real estate services may coexist; but
  • "Birdie" and "Birdy Body Wash," both used for soaps, are unlikely to both be registered because consumers may confuse one for the other.

  
• What do I do if I find an application that I think contains a trademark likely to be confused with mine?
  

  What do I do if I find an application that I think contains a trademark likely to be confused with mine?

  Trademark owners are responsible for monitoring others' use of and applications for registration of marks similar to their own. Trademark owners are also solely responsible for enforcing their trademark rights. If you believe that another person or company has submitted an application to the USPTO for registration of a mark confusingly similar to yours, please contact the Trademark Trial and Appeal Board (TTAB). You can speak to an attorney who is licensed in your state for a low monthly fee through our Business Legal Plan. To learn more, click here.

  

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