Conflict Between Three-Word and Two-Word Trademarks

Posted by Michael Shimokaji | Jul 22, 2017 | 0 Comments

QUESTION: I have a question on compound word trademark registrations. Without disclosing the actual name, we have a trademark application that has passed through opposition. we have submitted the specimen and are awaiting a registration. Two months ago a new application (has not been issued an examiner) was submitted with a similar name, in the same category, 03. our name is: GoodSkinActives competitor application is: Good Actives. What are the chances that the examiner will see a conflict with our mark which hopefully will be registered by the time an examiner is issued to our competitor?

ANSWER: Typically, when the latecomer to the same market removes one word of a multi-word trademark by an earlier user, the earlier user of the multi-word trademark has prior rights. Therefore, if the earlier user has  filed a trademark application, and the examiner finds it, the latecomer's application will likely be rejected.

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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