# BIG Trademark Question....how different does the trademark need to be from other marks?



## rubywenzday (Nov 18, 2008)

hi everyone,

does anybody know the answer to this question...
i am considering a trademark for a clothing brand, the one that i am thinking of consist of two words...example: "apple seedling" 

if someone else already owns the rights to one of those words and it is also being used for a clothing line..........example: "seedling"

if i decide to trademark and use the combined words for my clothing brand and it becomes popular, would i still risk infringement by the owners of the single word?

the problem is that someone already owns the word i wanna trademark, and haven't used it yet......so i thought my brand could be represented by multiple words instead


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## Solmu (Aug 15, 2005)

rubywenzday said:


> if i decide to trademark and use the combined words for my clothing brand and it becomes popular, would i still risk infringement by the owners of the single word?


Yes.

Using your examples, Apple Seedling and Seedling may or may not be deemed confusingly similar by the USPTO and the trademark application may or may not be granted. You'd need to consult an attorney who specialises in intellectual property, as it would be by no means an open and shut issue.

Assuming you can get a trademark for _Apple Seedling_ then Seedling still has the right to Seedling, and even if the USPTO didn't consider them confusingly similar, and you're both out there in the marketplace, the reality is your customers could still find them confusingly similar.

In other words, you might pay your filing fee for nothing and get knocked back, and even if you do get the trademark you may find you'd rather not have it.

Not all trademarks are in real use however, and that's probably especially true of clothing ones. It sounds like you're gambling on Seedling not really being an active brand (just having a tm that will dwindle away in time), leaving you as the heir apparent to their mark. It's a legitimate gamble to make, but it is a risk.

It would be advisable to consult a lawyer before moving forward.


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## rubywenzday (Nov 18, 2008)

> Yes.
> 
> Using your examples, Apple Seedling and Seedling may or may not be deemed confusingly similar by the USPTO and the trademark application may or may not be granted. You'd need to consult an attorney who specialises in intellectual property, as it would be by no means an open and shut issue.
> 
> ...


thanks lewis..... youre thinking the same way that i am, just what i was afraid of....
im 90% sure that i need to consult an attorney, but i dont know any in my area.....i like to referred when it comes to things like this and also im very low on the cash. im afraid i might pay an arm & leg to get legal assistance, i was laid off this year so my funds are very limited....orginally i wanted to have an attorney handle everything for me but plans have changed and now im trying to see if i could figure it out on my own enough just to cover my rear and get stuff going by word of mouth. then later when im employed again i will be able to invest more into my buisness and hire someone to help me out with it all.

the USPTO is a little confusing to me though, i was always under the impression that once a person owned one word they wouldnt allow another person to own the same word in their title....... :0/


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## Rodney (Nov 3, 2004)

> im trying to see if i could figure it out on my own enough just to cover my rear and get stuff going by word of mouth


If you did get a trademark, you would need to spend money to apply, you'd probably need to spend money to defend the trademark as well.



> but i dont know any in my area


You can check the local phone book or ask around. If you check with your local chamber of commerce, they may be able to refer you to legal services in the area.

Nobody can really tell you if it's OK for you to move forward or not.

You could do it and still get sued if the other trademark holder felt your design was too close to theirs.

You could pay the money for the trademark application and the trademark office could deny your application because they felt it's too close to the other existing trademark. 

The application fee for trademarks is not refunded, so that's something to take into account as well.

The best advice here is really to talk to get paid legal help if you have a legal question. Anything else is educated guessing which could end up costing you more than the attorney fees would have.


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## rubywenzday (Nov 18, 2008)

thanks alot guys.........i guess im gonna look into an attorney or just try an think of something more original that someone doesn't already own. i know the attorney is the best route but i thought i would cost me less to file it myself, doesn't seem that i know enought for that though. thanks for the advice guys i really appreciate it ;0)


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## Solmu (Aug 15, 2005)

rubywenzday said:


> thanks lewis..... youre thinking the same way that i am, just what i was afraid of....


On the plus side that means you already understand what you're up against. Better to know the bad news and plan as best you can than to be ignorant.



rubywenzday said:


> im afraid i might pay an arm & leg to get legal assistance


Sometimes organisations like the SBA will offer a limited amount of free legal assistance. It's worth looking around and seeing if there are any business mentor programs in your area.



rubywenzday said:


> the USPTO is a little confusing to me though, i was always under the impression that once a person owned one word they wouldnt allow another person to own the same word in their title....... :0/


To a point. Obviously there's the different classes, which gives us "Apple Computing" and "Apple Records". Alongside the trademark Apple have on just plain "Apple" though, in the same category (IC009) there are live trademarks on _Apples-To-Apples_, _One Bad Apple, Apple Signs, Apple Amy_, etc.

Granted despite being in the same category, the businesses are further apart than two clothing companies typically would be. But some of the above sell software, as does the "main" Apple.

They're not going to allow you to own mere synonyms of the title (Apple Clothing and Apple Apparel), or anything too similar (Red Apple and Green Apple, both selling clothing), but once you start getting a little more esoteric (Electric Apple, and Blue-Spider Apple) it's going to be a lot less clear.

Lawyers who specialise in this area of law will have better examples of actual precedents, based on which they may make a much more educated guess (which unfortunately is still what it will be) as to whether or not any given mark will be approved.


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## rubywenzday (Nov 18, 2008)

> To a point. Obviously there's the different classes, which gives us "Apple Computing" and "Apple Records". Alongside the trademark Apple have on just plain "Apple" though, in the same category (IC009) there are live trademarks on _Apples-To-Apples_, _One Bad Apple, Apple Signs, Apple Amy_, etc.


hi lewis,
using your examples.......i was actually thinking of was, because someone already owns the base word "apple" for the use of a clothing line. i had considered using my name first then include the baseword...ect. "Wenz Apple" or even "Apple Couture". i have a feeling that simply adding "couture" to the trademark would not be significant enough. i guess my problem is that ive already established a name with my artwork using that particular word and i really want people to be able to relate to the products to my work. 

originally i thought that it might be similar to web domains, where a company just buys all the most common or possible names and hold on to it til someone is interested....then sell it at a high price. so i looked up the person's name and cannot find anything about them. what can you do....lol

you're advice is really great and i super appreciate it too.....at least i know that im on the right train of thought, but it really looks like i need to consult with someone and get some help. im gonna check out some lawyers and the sba too........hope i can find a soloution :0)


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## MrBaker86 (Oct 8, 2008)

I had the same question but mine is a little different. One of the words is trademarked for shoes and only shoes. I thought if I took shoes off the list of goods then it might of went through but I decided to cancel my order with legalzoom.com. I don't have money for a lawyer so I'm back to the drawing board


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## tiger24 (Jan 11, 2009)

hi wenz,

my situation is not as close as yours it may seem but i started an MMA, boxing clothing line named
Throwin' Bombs and there is an existing brand called Throwdown.

not too close but just to let you know i had no problems...


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## rubywenzday (Nov 18, 2008)

> I had the same question but mine is a little different. One of the words is trademarked for shoes and only shoes. I thought if I took shoes off the list of goods then it might of went through but I decided to cancel my order with legalzoom.com. I don't have money for a lawyer so I'm back to the drawing board


hi richard, what are you going to do? are you still gonna file it on your own?


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## rubywenzday (Nov 18, 2008)

> hi wenz,
> 
> my situation is not as close as yours it may seem but i started an MMA, boxing clothing line named
> Throwin' Bombs and there is an existing brand called Throwdown.
> ...


hey andy, thanks for the tip.......it does help a little. did you file that trademark on your own or did you hire an attorney?


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## tiger24 (Jan 11, 2009)

rubywenzday said:


> hey andy, thanks for the tip.......it does help a little. did you file that trademark on your own or did you hire an attorney?


hi wenz,

i am paranoid so i went with a lawyer.
i am in canada by the way but i did apply in both canada and usa.

it is still in the red tape of both countries.
meaning, my preliminary searches were doneand cleared, all apps filled out and formally submitted to both trademark offices. now i just wait till they get to mine and rubber stamp the thing...at least that's what my lawyer tells me.

good luck,
andy


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## rubywenzday (Nov 18, 2008)

> now i just wait till they get to mine and rubber stamp the thing...at least that's what my lawyer tells me.


good news andy!!!! thanks for the positivity :0)


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