|You must have at least a basic understanding of the most fundamental concept of trademark law: two separate marks cannot coexist if, considered one against the other, there is a likelihood of confusion. Whether or not there is a likelihood of confusion between the two marks is determined with 20/20 hindsight by the courts. If you pick your mark intending to profit, in any way, from the goodwill associated with a pre-existing mark, you are in deep trouble. You have big problems even without the intent. You can't just change the font, or change the artwork, or change the spelling, and be immune. And a registration by the United States Patent and Trademark office ("USPTO") doesn't solve all problems.
Whether two marks, considered together, create a likelihood of confusion is the central issue in innumerable lawsuits. It is also the basis for innumerable rejections by the United States Patent and Trademark Office. Place this issue highest on your list when you decide how to proceed and if you want to look at this issue in greater depth, look at our hypthetical case. Sometimes the issue is clearly against the junior user, as in the example given in the preceding paragraph, and it often arises when no search or a cut rate search is done before filing with the USPTO. Conversely, large companies sometimes terrorize smaller ones into dropping their use of a mark, employing vastly superior economic power, even where by any fair analysis a court would find no likelihood of confusion if the matter ever got to trial. And it has been said that some trademark examiners with the USPTO tend to see confusing similarity in highly questionable cases, much like a bad umpire or referee. It is not an easy matter to deal with.
You minimize (but never eliminate) the possibility that you could be embroiled in a dispute with the USPTO (or someone else over your respective marks) by conducting a search, and the better the search the less likely you will have problems. You minimize (but never eliminate) that same possibility when you have your search results reviewed by an attorney versed in trademark law. Even a federal registration of your mark by the United States Patent and Trademark Office does not eliminate that possibility.
We cannot eliminate that possibility, either, but we do offer free review of post application trademark conflicts (some restrictions apply). We will undertake to advise without charge any person who utilizes our recommended search and our recommended services if and when such person receives a cease and desist letter from someone else, claiming infringement of that person's mark. (Companies monitor their marks and, if they become aware that someone else is using a mark they consider to be an infringement, the customary practice is to send the alleged infringer a "cease and desist" letter, which is simply a demand that the alleged infringer immediately quit using the mark, failing which a suit for injunctive action is threatened). "Advise" means (1) review the basic facts you present to us in a single writing concerning your actual use of your mark and what you know of the use of the mark by the other party, (2) review the cease and desist letter sent to you by the other party and (3) provide you with a list of options, all without charge. It does not mean defend the lawsuit if you decide that you will not cease and desist, but it will normally mean that you will get out of the situation without liability to the other side if you quit using the mark in question.
We will also advise without charge any person who utilizes our recommended search and our recommended services if and when such person receives an office action letter from the USPTO, claiming confusing similarity with another person's mark, if we have not pointed out that possibility in advance of the filing with the USPTO. "Advise" in this context means (1) review the basic facts you present to us in a single writing concerning your actual use of your mark and what you know of the use of the mark by the party cited in the USPTO office action, (2) review the office action letter sent to you by the USPTO and (3) provide you with a list of options. It does not mean contesting the USPTO office action or responding to the USPTO with respect to the office action.