What Can We Do When There Are Two Similar Trademarks?

Giselle Ayala Mateus, Esq.

The similarity between trademarks is important in two scenarios, registration or litigation. Similarity is a concept usually used in the context of copyright law because similarity is important to establish copyright infringement or copyrightability. In the trademark law context, the similarity is important because the USPTO wants to avoid the co-existence of trademarks that are likely to confuse. Similarity by itself is not an issue; however, if two trademarks are so similar that a potential consumer could be confused about the commercial source of goods or services, then trademark similarity can be a problem.

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Trademarks’ similarity in the context of registration

When an applicant applies to register a trademark, the USPTO examining attorney researches to establish if there are other similar trademarks already registered. If there are trademarks using similar words, logos, or features, this is not a problem if each trademark is used to distinguish different and unrelated goods or services. In other words, if IVON and IVONN are registered but one is used to mark financial consulting services, and the other is register to promote organic goods, this is unlikely to be a problem. Considering this, before an application for registration is filed, attorneys conduct a clearance search, which allows them to advise clients regarding the viability of a trademark or the existence of risk factors. 

The specific case of famous trademarks

Even though similar trademarks in different industries can co-exist, when a trademark is very popular among consumers or when it has achieved recognition in more than one market, that trademark can be categorized as a famous trademark can prevent the registration of similar trademarks, even if they are used in a different industry, this applies to trademarks in New York as well. For example, even though the Nike logo is used especially to promote sports clothing and sports footwear, it is unlikely that Nike will stand by while another tries to register a similar trademark in the health industry or for purposes of financial coaching services. Nike has gained such a level of recognition that it is unlikely that trademarks similar to Nike’s logo are registered.

What could happen if similar trademarks are filed for registrations?

 If two or more similar trademarks are filed for registration before the USPTO, the examining attorney will probably issue an Office Action requesting the applicants to offer evidence that proves there is no likelihood of confusion; that is, evidence that proves that a potential purchaser would be able to distinguish between the applicant’s goods or services.

Trademark Attorney 

Dedicated to protecting your intellectual property & trademarks in NYC and beyond.

Trademarks are the essence of a brand, making it pertinent to a business’s success to successfully protect its trademarks in New York, NYC, and beyond. Our New York trademark attorneys in NYC help businesses properly protect product names, logos, and slogans. When trademarks are properly protected, they generate significant and long-term value. Trademarks are often a company’s most valuable asset, so thoroughly intertwined with the business that it is difficult to extricate the two.

Accordingly, selecting a trademark is a critically important decision when developing a brand. At G.A.M. Law Office, our New York trademark lawyers help clients select, properly use and register their trademarks. Our trademark services include trademark filing, New York trademark registration, brand strategies, counseling, clearance searches and risk analysis, registration, TTAB proceedings, enforcement, and licensing in NYC and beyond.


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