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Trademark..?

ravenrider's Avatar

I am in the process of naming my device. I went to the USPTO search for trademarks, and found one product with that name… Does that mean that I can’t use it…? I have seen on different names a multitude of the same name and they are all live, amongst dead trademarks.
Any guidance in this area would be appreciated… Thank you… Keith

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ravenrider's Avatar

Hi Frank… Now the one I really wanted has one other live TM… and the rest dead… So I put the old noggin to it…and when I searched a second choice it had at least half a dozen live TM’s they were being used in different product catagories… I don’t get it…

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speedbump's Avatar

Keith it’s my understanding that at times the same name can be used in a different classifications and might be allowed by the USPTO. Probably the safe bet would be to find your own unique name and like Frank has said contacting an attorney might be advisable. The link below explains some of the in’s and out’s of the situation. There’s lots of factors that play into the equation like there always seem to be with anything patent related.

http://tacticalip.com/2012/04/02/does-trademark...

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ravenrider's Avatar

Thanks Archie for the link.. it pretty much answered my question in that arena… Now another… can I just create a word that doesn’t exist..?

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awildx's Avatargold

I have run into this before when I was beta marketing a dietary supplement a few years ago. Our name was “exactly” the same as another dietary supplement which was already a registered trademark. (Your situation may be different if you aren’t in the same industry, but keep in mind that a car company probably won’t be able to name a car the “Kleenex GT” even though they are completely unrelated categories).

When this happened to me I was beta marketing a concept so it didn’t matter much to me as the name wouldn’t be going to mass market. I’m not an attorney and can’t give legal advice so instead I’ll tell you what we did:

Operated as usual, brainstormed a list of what else we could do since we really liked the name. We came up with:

Solutions
1. Rename it entirely (was not really an option after all of our labels had been printed). But could be an option for the mass market product.
2. Call the other dietary supplement company and see if they liked our “version” and maybe there’s some licensing potential. Tell them we were only testing our idea and just realized we had the same name. Figured we’d at least chat and see what they thought. If they hated us we’d just change the name and say sorry.
3. Change the name slightly. Inside their name and ours was a “&” in-between words. We thought about changing to “and” or “n”
4. Reveal market potential through sampling, sales, and trade show feedback. Use this round to improve our formula and concept, file PPA, then seek investors and licensing agreements instead of going mass market ourselves. Whoever licenses the formula can name it whatever they want.

We chose #4. And currently the idea is running with EN’s Insider Licensing Program!

“Thanks Archie for the link.. it pretty much answered my question in that arena… Now another… can I just create a word that doesn’t exist..?”

Yes and it’s protectable in a couple of ways.

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ravenrider's Avatar

Now through my misty eyes I sought another name… and the TM search did not show up another match on a different name when I had “The” preceding the word. When I dropped “the” from in front of the word, it showed a bunch of ‘live’ names.. What would you do in that case… would that be attainable..? I can’t afford an attorney…

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speedbump's Avatar

Keith as Adam said you can trademark a made up word. Examples would be Xerox, or Zippo for lighters which both went on to be somewhat of a generic name which is now used represent an entire market. I’m far from being an expert on trademarks but just recently researched going the trademark route for a project. I always like to do as much research as possible on my own before moving forward. I did contact my attorney and we decided to do something different for a variety of reasons. It’s always helpful to know as much as you can about something so you can make an informed decision. Also if you do decide to use and attorney… time is money… so the less amount of work they have to do the better.

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speedbump's Avatar

Kieth please don’t take anything that I post as having any sort of legal clout behind it but my Guess would be that it might not be allowable since The in the trademark would carry very little weight. If you’re in the same classification then I would think not. A different class maybe but I wouldn’t have a clue as to what the patent office would decide. Even going through an attorney there’s probably no sure thing but you would increase your chances. Without an attorney I would think you would need to take the safest route possible. This all is still just my opinion and should not be considered as legal advice….. just trying to help.

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chicagoinventor's Avatarg8_badge

To get the final word a lawyer is best, but if you want to do legal work on your own I recommend Nolo Books. The link for their trademark book is:

http://www.nolo.com/products/trademark-trd.html

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ravenrider's Avatar

Well this device will be submitted here so the prevailing powers that be will most likely make that decision….

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chicagoinventor's Avatarg8_badge

If you’re submitting the idea here, don’t worry about it.

Leave your suggestion for the trademark, and include the trademark search info at the end of the prior art search box. They have marketing and legal experts who create product names and brands all the time. They may or may not like your trademark idea, the important thing is if they will like your invention idea!

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ravenrider's Avatar

I just like to cover all the bases… due dilligence and all that… They would’ve liked the first choice I believe.. even the second was pretty good… but others evidently thought so too… The device will stand on it’s own… It will go into the medical catagory, but it is a consumer device.. so the field should be a lot less crowded…

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speedbump's Avatar

Good luck with your quest Keith.

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williamj's Avatargold

Keith,

Good for you for trying to go that extra mile in your due diligence.

As far as ‘naming’ and ‘branding’ submissions go I believe it’s a chicken and an egg scenario.

In an sponsored search the sponsor may have an entire line of products that they want to compliment (the chicken), and hence, they would do their own branding to maintain a connection with their existing line.

In an open search, “an idea looking for a sponsor (the egg)”, a descriptive and catchy name would most likely be an added benefit.

Just my way of looking at it.
Best of luck !

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ravenrider's Avatar

Thanks all for the info… I guess I’ll drop that as a priority… one less think to clutter my mind… and God knows I need every molecue after all the years I’ve challenged my body to survive my idiocracy…

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