Trademarks using common suffixes

Posted by Michael Shimokaji | Jul 15, 2014 | 0 Comments

Question: Are online companies granted a trademark monopoly on common suffix words? Can I register these common suffix marks successfully?

Suffix: Board

I consult people via an online chat board.

So does ANSWERBOARD.com; an online national consulting firm who holds a registered trademark in said name.

I want to call my new online consulting firm: BANANABOARD.com

Suffix: List

I promote the goods and services of others via the internet; namely listing classified ads placed by others.

So does TRADELIST.com; a world-wide website that holds a registered trademark in said name.

I want to call my new online ad listing service: SKYLIST.com

Suffix: Book

I provide an online bulletin board service for others to sell, trade, and connect with others.

So does LINKBOOK.com; an online social networking site that holds a registered trademark in said name.

I want to call my new online bulletin board service: PINEAPPLEBOOK.com

Answer: All trademark applicants are supposed to be treated equally. No one type of company is given a monopoly over another.

Whether you can register a mark depends on whether your mark would likely cause confusion with others' marks. This requires an analysis of various factors, including but not limited to the similarity in sounding of the marks.

If your above examples were inclusive of all marks with the words “board”, “list”, and “book”, it seems that you would have a good chance of obtaining registration.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.

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