Posted by Michael Shimokaji | Nov 15, 2018 | 0 Comments

QUESTION: Similar trademark with an S at the end. Can and Should i oppose? I've got a recently registered trademark under IC 041. US 100 101 107 classifications that someone attempted to purchase from me. However after I flat out rejected their offer they went ahead 2 weeks later and registered the SAME trademark name but with an S at the end of it under a different classification of IC 036. US 100 101 102. For example is my trademark was: AVIOITO they then went and registered their under AVIOITOS with the S at the end and the classification being the only difference. My question is: 1. Will the trademark office allow this to go through? 2. Are they infringing upon my mark? 3. Should I look to file an position? 4. What's the best approach to dealing with this?

ANSWER: Though not definitive, the substantially same trademark used in a different class of goods or services may be allowed by the trademark office. And since they are different goods/services, there is likely no consumer confusion that would equate to infringement. 

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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