# Z instead of S in a Trademark



## kbraska (Apr 4, 2010)

Hi all. I searched the trademark I want in TESS and it shows a very similar result to the one I'm wanting. Let's say the one I want is A STATUS and the one that is already trademarked is A-STATUZ with the hyphen and a "Z" instead of an "S". Would they consider that too close and throw mine out? Also, they are both for clothing.. 
Does it matter that the other persons logo is completely different and also, would it be better to trademark the logo itself or just the name of the brand?
I'm going to ask a IP lawyer about it, but just wanted to see if you guys had similar issues.

Thank you!


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## PositiveDave (Dec 1, 2008)

It is challengeable if the other company thinks that it may lead to confusion.


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## kimura-mma (Jul 26, 2008)

kbraska said:


> Let's say the one I want is A STATUS and the one that is already trademarked is A-STATUZ with the hyphen and a "Z" instead of an "S". Would they consider that too close and throw mine out?


Yes, there is a good chance that your mark would be considered too similar.

Examining attorneys often use sight, sound and meaning to compare similar marks. While the sight may be slightly different, the sound and meaning of the marks are the same. I know A STATUS is just an example, but the same is probably true for the actual mark you intend to use.



kbraska said:


> Does it matter that the other persons logo is completely different


It depends on their trademark registration. Does it say "Standard Character Mark?" Or "Stylized Design?"

If it is a standard character mark, then they have broad protection rights to the brand name. So it won't matter if the logo is different than yours.



kbraska said:


> would it be better to trademark the logo itself or just the name of the brand?


It is usually better to trademark the brand name as a standard character mark. You could also trademark the logo as a stylized design as well, but that should be second in priority to the brand name.



kbraska said:


> I'm going to ask a IP lawyer about it


Good idea.


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## kbraska (Apr 4, 2010)

kimura-mma said:


> It depends on their trademark registration. Does it say "Standard Character Mark?" Or "Stylized Design?"
> 
> If it is a standard character mark, then they have broad protection rights to the brand name. So it won't matter if the logo is different than yours.


Yeah, this is what his is:

Mark Drawing Code: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Err. He just re-registered this mark this year. It says the filling date was January of 2011 and that the registration date was August 2011. I'm assuming the time frame from when the trademark to the next year that date is when it expires?

Oh, actually there is a trademark that is "A-STATUS" and it wasn't abandoned until August 7 2007 and the same guy that has "A-STATUZ" applied for his first one that he had on January 21 2007. So from what I'm seeing they both had theirs at the same time. Both are for clothing.

i'm really hoping that I can get this. It's been something I've been working on very slowly for 2-3 years and I have many designs for it. I have another brand I want to bring out as well, but I'm not sure if it would do as well as I'm anticipating the one I want now would do.

Thanks for your help guys!


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## kimura-mma (Jul 26, 2008)

kbraska said:


> Yeah, this is what his is:
> 
> Mark Drawing Code: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS


This means that the mark is registered as a design. So they may not have broad protection rights to the brand name. They may still have common law rights to the brand name even though their registration specifies a design element. You should probably consult an attorney to get more details before proceeding.



kbraska said:


> He just re-registered this mark this year. It says the filling date was January of 2011 and that the registration date was August 2011. I'm assuming the time frame from when the trademark to the next year that date is when it expires?


As long as a mark is continually used in commerce, there is no expiration.

Perhaps it was abandoned and re-registered. Or perhaps the application was never completed the first time and then there was a second application which ultimately was registered.

Without seeing the info on the USPTO site, I don't for sure what happened. 



kbraska said:


> Oh, actually there is a trademark that is "A-STATUS" and it wasn't abandoned until August 7 2007 and the same guy that has "A-STATUZ" applied for his first one that he had on January 21 2007. So from what I'm seeing they both had theirs at the same time. Both are for clothing.


The "A-STATUZ" application may have been submitted prior to the "A-STATUS" abandonment. But when was the registration granted? If it was after August 7 2007, then that means they didn't both have their trademarks at the same time.


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## kbraska (Apr 4, 2010)

kimura-mma said:


> The "A-STATUZ" application may have been submitted prior to the "A-STATUS" abandonment. But when was the registration granted? If it was after August 7 2007, then that means they didn't both have their trademarks at the same time.


This is the one for the first "A-STATUZ":

Goods and Services:	(ABANDONED) IC 025. US 022 039. G & S: Clothing, namely, shorts, pants, shirts, belts, head bands, shoes, socks, underwear, skirts
Mark Drawing Code:	(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code:	26.11.26 - Oblongs as carriers for words, letters or designs
Filing Date:	January 31, 2007
Current Filing Basis:	1B
Original Filing Basis:	1B
Published for Opposition: March 4, 2008
Description of Mark:	Color is not claimed as a feature of the mark.
Type of Mark:	TRADEMARK
Register:	PRINCIPAL
Live/Dead Indicator:	DEAD
Abandonment Date:	January 29, 2010



This is the "A-STATUS" one:

Goods and Services:	(ABANDONED) IC 025. US 022 039. G & S: Hats; Jeans; Pants; Shirts; Sweat pants; Sweat shirts; Tennis shoes
Standard Characters Claimed:
Mark Drawing Code:	(4) STANDARD CHARACTER MARK
Filing Date:	March 30, 2006
Current Filing Basis:	1B
Original Filing Basis:	1B
Published for Opposition: November 14, 2006
Attorney of Record:	Clinton J. Cusick
Type of Mark:	TRADEMARK
Register:	PRINCIPAL
Live/Dead Indicator:	DEAD
Abandonment Date:	August 7, 2007



And this is the one that is LIVE now "A-STATUZ"

Goods and Services:	IC 025. US 022 039. G & S: Belts; Caps; Coats; Dress suits; Dresses; Hats; Headbands; Jackets; Pants; Shirts; Shorts; Skirts; Socks; Sweatshirts; T-shirts; Tennis shoes; Ties; Underwear; Wrist bands. FIRST USE: 20070115. FIRST USE IN COMMERCE: 20070115
Mark Drawing Code:	(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code:	26.11.26 - Oblongs as carriers for words, letters or designs
Filing Date:	January 19, 2011
Current Filing Basis:	1A
Original Filing Basis:	1A
Published for Opposition: May 31, 2011
Registration Date:	August 16, 2011
Description of Mark:	Color is not claimed as a feature of the mark. The mark consists of a circular oval with the stylized text "A-statuz".
Type of Mark:	TRADEMARK
Register:	PRINCIPAL
Live/Dead Indicator:	LIVE


Also, what does "Published for Opposition" mean? I've read the description, but I'm not quite getting what they mean.

Thank you again


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## kimura-mma (Jul 26, 2008)

"Published for opposition" means that once the examining attorney approves a mark, it gets published in the Trademark Office's official gazette. During this time, anyone who thinks the mark is too similar to their own trademark can oppose the examining attorneys approval. If no one opposes, the mark can be officially registered as a trademark.

The "A-STATUS" application was filed, published for opposition and then abandoned. There is no registration date listed. Perhaps someone opposed the mark. Or perhaps they never completed the Statement of Use which is needed to finalize the registration. Either way, it does not appear to have ever been officially registered (based on the info you posted here).

The same applies for the first "A-STATUZ" application. It was filed, published for opposition and abandoned. But there is no registration date listed.

The second "A-STATUZ" application seems to be the only one that was completed and officially registered.


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## kbraska (Apr 4, 2010)

Ahh, ok. Thank you so much for your help! I'm really hoping that since it is trademarked as a design that I will be able to do it. Thanks again, you've been really helpful.


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## kimura-mma (Jul 26, 2008)

To be honest, you shouldn't get your hopes up. Applications are non refundable. So make sure you consult an attorney before spending the money. Good luck.


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