Want to work with me on your USPTO Trademark application? I have a few spots in my schedule for new clients for Trademark Packages ($850 plus USPTO filing fees), where I will represent you & file your trademark with the United States Patent & Trademark Office. This includes doing a trademark search, consulting about strategy, filing the application, and facilitating it through the trademark office process. If you're interested, email me at elizabeth@elizabethpw.com and we can get started discussing if this is a good fit for you and next steps.

What if a brand new business, not yet operating, in another country decides to copy nearly the exact business name (added an ‘o’) within the same industry as a small business that has a brick and mortar practice that has an online store, selling products online. They copy domain name, social media handles, business model, and similar logo. The established business filed for trademark that is pending in the U.S., and now that new business decides to file a trademark in their country one day after being asked to stop using the name. What can that existing business do if their products are likely to reach consumers internationally in 5+ years? Any help is greatly appreciated.

@ElizabethPW

3 жыл бұрын

As you may know, registered trademarks are not international - they are only in the country where they are registered. So, Company A in Country A could get a registered trademark in Country A over the exact same thing, in the same industry, as Company B in Country B. But, trademark infringement is about where sales are made. So if Company B started marketing their business in Country A, and makes sales to individuals/businesses who are located in Country A, they have violated Company A's trademark. Doesn't matter that Company B has a trademark in their own country, and doesn't matter that the sales are made over the internet - it is about where the customers are located, where they take delivery. This is why many big corporations with large budgets register for trademarks in many countries. But for small businesses, they typically just start in their own country. It can make sense to register for a trademark where you plan to expand in the relatively near future, to make sure some company local to that area doesn't beat you to get a trademark there.

Elizabeth, what is the recourse if I started a business, did not find out about the name being trademarked and now the owner of the business across the country is asking me to re-name because she has registered it a s trademark? Am i completely screwed?

@ElizabethPW

4 жыл бұрын

Sorry to hear that you're having this problem! There are two issues - the legal issue of whether you have a good legal argument that maybe the other trademark doesn't apply here because it's different enough, or it is not the same industry, or some other exception. The other issue is whether you have the energy and money budget for the drama of the situation, or if it is easier to change or adjust your name (depends upon how long you have been in business, how much investment you have made in the name, how much energy/time/cash you have, etc.). I also size up the other side and see if they sent a personal note from the owner or a small time lawyer or if it came from a big law firm -- that tells me their budget too. Many of my clients decide to change their name, but a few decide to fight it because they have the budget, a good legal argument, and the energy. If you are thinking about fighting it though you'd want to speak to a lawyer to find out if you have a good legal argument.

@designmaniac3920

4 жыл бұрын

@@ElizabethPW Thank you very much for the explanation. I did contact my lawyer already and hopefully we can settle this peacefully.

Hi Elizabeth! I have a question, in 2002 I did trademark my product then let it go dead about 10yrs ago. I recently decided to revamp my product and file a new trademark of the same name. The examining attorney has said there is a similar name (includes 2 of the same words) and we both are using it for some of the very same products. She is in a different country, has an online presence but not big. I would also be selling my products online. I wanted to keep my original name because I had testimonials and wanted to reach back out to these customers. I also thought because I originally sold my product way before her I might have clout...I did speak with the attorney and he said because I let it go it no longer mattered. Do you think I should change my name? Or should I just quietly let it be. We are making the final steps to production. I am just not sure what to do, this felt like a punch to my stomach. I appreciate any input you have. Thank you in advance!

@ElizabethPW

2 жыл бұрын

Sorry to hear you are having this problem! Hm sometimes there is some kind of argument you can make with the trademark office, but if the other person has a trademark, it could be an expensive fight (including needing to file with the TTAB - kind of like a court). It can make more sense to spend the money on branding and marketing of a new name versus a legal battle. I have had some clients who just kept their name (even though they could not get a trademark approved) -- really depends upon sizing up who the other business is, if they are likely to care/sue.

@blondelaura1

2 жыл бұрын

@@ElizabethPW You are right, besides I don't want any negative energy with this product. The examining attorney had valid points even though I wanted to ignore him. I definitely don't want to be looking over my shoulder all the time. Thank you so very much for your response, you just made my decision of starting new much easier.....as you know this has been a long process, but maybe meant to be. Thank you again!!!!!

@ElizabethPW

2 жыл бұрын

Welcome! Best wishes with it

i am using a band name, it came up as the same name as some rapper dude as well, is it good if we have the same name, btw i think his name is his actual name too idk if that means anything lol.

@ElizabethPW

3 жыл бұрын

Hi Josh - there are special trademark rules for the names of bands. Interestingly enough, it is harder to trademark a name of a band if it is the person's actual name vs if it is picked as a random phrase. If it is a person's actual name, they have to show that it is associated with 2+ products/services (like two CD covers) so it is the source of goods/services (and not just someone's identification). When there are two business with the same name but in different sub-categories (two very different types of music for example) then sometimes you can still register it, if the two areas are so different, customers/fans would never be confused. Here's a link to some more info about musician/artist trademarks: www.uspto.gov/learning-and-resources/ip-policy/musicians-and-artists-profile

Hi, I hope all is well. I hope you can give me advice on this😩 I have a question about similar words used in a trademark while in the same category. Unfortunately A company registered a word I am using for my brand. This company has three words in their brand name (xxx 'same word' xxx) while my brand name consist of two words ( 'same word' xxx). We would both be in the same category. Should I change my name? I read a comment you responded to and while I know spacing and punctuations won't differentiate it enough, I was hoping that since our overall name is different and that we live in different States, this wouldn't be a problem. I really don't want to change my name as I selected this name almost a year ago. However I don't want any problems later on down the road. As if now, the company in question does not have a logo, website, social media presence, or products from what I can tell. I look forward to your response. Thanks!!!

@ElizabethPW

3 жыл бұрын

H Michele - the first thing I would do is see who was first - did you start using the name first, or did they? You can look in their trademark registration listing and see the "date of first sale" - that's their date. (Obviously who is first has more dibs.) The next is I'd look at the "different words" you each have to see if they are generic or general descriptions for what you each are doing. Like if they were XYZ Financial Consulting and you were XYZ Money -- well money and financial are pretty much the same thing, so that's not good for you. But if they were Kooky XYZ Thoughts and you were XYZ Frolics - while you overlap on XYZ you each have different words that are non-general/obvious (depending upon the category). Fundamentally, the standard is whether you have overlapping potential customers who would be confused by the two names, who would think that it was the same company. Since it is not an exact rule, it really depends upon the situation. Lastly, I'd look at the company and evaluate whether they are likely to sue - do they have a lawyer on their trademark application, are they still in business, etc.

@michelebrown5963

3 жыл бұрын

@@ElizabethPW Thank you so much for your feedback!! They do have a lawyer on their application and I plan to consult a lawyer as well. the different name I chose would allow me to go into different areas... which is why I selected it. It sucks to already have conceptualized every aspect of my brand name with the possibility of having issues down the road. I truly hope this won't be the case :(

Hey Elizabeth! Great video! I’m a singer and I go by the name HEIDI. After doing some research I saw the name Heidi was being used by another artist but doing yodelling very different to what I do. Am I still aloud to use this name. Would I eventually loose rights to using it. Or does it count as a different name as I’m using capital letters. How do I check if the name is trademarked all ready? Any help or advice would be much appreciate x

@ElizabethPW

3 жыл бұрын

Hi Heidi! Whether or not it is capitalized (or have a clever spelling or insert symbols or spaces into it) doesn't matter. The standard is whether overlapping customers (or fans in this case) would be confused. Typically if the two companies/people are in different enough types of business (or types of music), their customers/fans would not overlap, so there isn't any confusion. But it depends upon the situation, of course. Another issue is whether it is your actual legal name (usually people have the right to use their legal name, even if someone else has a trademark). Do a search at tmsearch.uspto.gov/ to check the USPTO database.

@Heidimusicuk

3 жыл бұрын

@@ElizabethPW Thankyou so much this really helps so do you think it would be okay to have HEIDI would you be avaiabkento have a zoom call if I pay for some further advice ! I don’t really have any mentors so I’m trying figure it out myself ahah. And I don’t wanna shoot my self in the foot! Thankyou for ur time !

@ElizabethPW

3 жыл бұрын

@@Heidimusicuk yes I have Quick Calls (15 min for $100) - you can learn more about them here: www.elizabethpottsweinstein.com/15-min-quick-call/

Can I use Crazy’s but spell it like “KRZYS” and get it trademarked?

@ElizabethPW

3 жыл бұрын

It depends upon the class (product or service category). There are thousands of trademark applications with the name "crazy" in them, so it can't conflict or be confusingly-overlapping with one of those. Spelling creatively doesn't necessarily get around another trademark if the sounds of the words are the same.

Hi there, anyone knows if a minor can register a trademark in uk? a 15 years old can apply for a trademark in uk? I cant find the answer on internet, thanks for your help

@ElizabethPW

3 жыл бұрын

Hm I don't know (you'd need to ask a UK attorney). A minor can owner a trademark in the USA.

@leo-the-truck7672

3 жыл бұрын

@@ElizabethPW Thanks for your reply

Can I stop someone else registering the same trademark name under any other classes if currently no one else is using it apart from me??? If they start registering my trademark name under other classes the trademark will be diluted and it will loose its value. Eventually, when everyone registers the same word the trademark name can become generic. Please let me know your comments!

@ElizabethPW

Жыл бұрын

You stop someone else from registering the same trademark in the similar classes by registering your own trademark. In theory that also would stop someone getting a trademark in any "confusing similar" or commonly overlapping class. Really, most trademarks have multiple owners in multiple classes -- it is very common to not be totally unique. It does not become generic by people registering it -- the opposite actually. It becomes generic because non-trademark-owners use it without the trademark owners stopping them (via lawsuit).

@SK-hv3zn

Жыл бұрын

@@ElizabethPW Thank you! I appreciated a lot for the comment.

I want "dogchute" but it's taken...can i use "dog chute" with a space?

@ElizabethPW

3 жыл бұрын

Good question - no, adding a space (or a dash, underscore, etc.) doesn't change it enough.

@jahnwarnermedia

3 жыл бұрын

@@ElizabethPW original"dog"chute? (this isn't the name but it is close enough...I really need the chute in there if you knew the product you'd understand how important it is for me to have the full ""dog"chute " together as a description

@ElizabethPW

3 жыл бұрын

@@jahnwarnermedia If there's a trademark a word, then adding symbols like "" or extra words (like original) doesn't get around the trademark. But if you are at that level of needing to find something that will work, you'd need an attorney to help you. For example, one of the other issues is that it matters what "class" (category) the registered trademark is in. An attorney can help you find a sweet spot for what you want to do.

⚜️Would common law apply to all states when a company who has not registered a ™️ when using the internet to trade?.. That would then count toward ‘use’ in all states within America, surely?

@ElizabethPW

4 жыл бұрын

Hi - the "common law" applies when you are making sales in a state or area - then you are engaging in commerce there. Some companies are large and make sales in every state and every city (Amazon, for example). But many small businesses do not make sales in some less populous states or areas. Also, if you only made a sale a long time ago, at a certain point you are no longer engaging in commerce there (until you make more sales).

Hi.I like what you said maybe you can help me have a few questions to ask you...

@ElizabethPW

2 жыл бұрын

If you'd like to speak to me via phone to get your questions answered, here's a link to learn about quick calls - www.elizabethpottsweinstein.com/15-min-quick-call/

What if your buisness name is named after a celebrities stage name?

@ElizabethPW

2 жыл бұрын

Interesting question. Names can be trademarked, so you would want to search whether this person trademarked their name. Also need to consider if it would be confusing to potential customers -- like is there and overlap with what they do, where a potential customer could think they owned the company or they endorse the company. Also would depend upon how unique the name is, how famous they are, and whether you have a good reason for using the name (like if it is also your name).

Damn someone really stole my name and trademarked it and I’m not changing it I rather get sued over and over I had it first I don’t care about who legally owns it I had it before so I’m still going to use it

@ElizabethPW

3 жыл бұрын

Sorry to hear that happened! There are rights if you were already using it in commerce before they filed, but those "concurrent rights" are just more complex.