Quick Trademark Question

[snowswap]

What are the laws regarding how similar a trademarked name can be?

For example, if I created a product named the Louisville Chugger, would this be infringing upon the trademark of Louisville Slugger?

Thanks for your help!

[generationy]

Hey! Thanks for posting your question! I love the fact that you are preparing youself now before hand which is a sign of a concerned and dedicated entrepreneur. Good for you! Here are some resources for you (below):

Patents Guidance, Tools & Manuals
How to Trademark a Logo

Good luck!

[snowswap]

Thank you so much for the links!

So I read this

a. Conflicting trademark does not need to be identical, just similar.
b. Examples of conflicts for trademarks that were not similar include CYCLONE and TORNADO for chain-link fencing, BECK'S BEER and EX BIER for beer, PLAY-DOH and FUNDOUGH for clay.

Does this mean "Louisville Chugger" would infringe upon "Louisville Slugger?" Louisville Slugger is the world's leading baseball bat manufacturer, while The "Louisville Chugger" will just be a drinking game shaped like a plastic baseball bat. Or is this an issue that I would need to take up with a lawyer?

[snowswap]

After a little more reading I found

341 (C.A.9) 1979. The Court there announced eight specific elements to measure likelihood of confusion:

1. Strength of the mark
2. Proximity of the goods
3. Similarity of the marks
4. Evidence of actual confusion
5. Marketing channels used
6. Type of goods and the degree of care likely to be exercised by the purchaser
7. Defendant's intent in selecting the mark
8. Likelihood of expansion of the product lines[1]

Since it is unlikely that there would be any confusion between my product and the actual Louisville Slugger product, I should be in the clear, correct? The will not be marketed in the same way, one is a drinking game, the other is sporting goods. The price difference will be enormous and it is unlikely my product line will be expanding.

[akula]

Since it is unlikely that there would be any confusion between my product and the actual Louisville Slugger product, I should be in the clear, correct?

i'm a lawyer. yes that is correct.

a number of issues might come up.

1. your application t register the trademark may be declined because the regulator might think your trademark is misleading.
if this comes up, you'll have to explain to the regulator why your trademark is unlikely to confuse consumers about your association with the "Slugger brand"

2. if your trademark is granted, you may be approached by the owners of the "slugger" trademark with a cease and desist letter. if you get this letter, you'll may want to comply with the letter, or decline to comply and risk the matter going to court, where again you'd need to argue why your "chugger" trademark is not misleading

However, if points 1 and 2 do not arise, you're sweet.

[snowswap]

i'm a lawyer. yes that is correct.

a number of issues might come up.

1. your application t register the trademark may be declined because the regulator might think your trademark is misleading.
if this comes up, you'll have to explain to the regulator why your trademark is unlikely to confuse consumers about your association with the "Slugger brand"

2. if your trademark is granted, you may be approached by the owners of the "slugger" trademark with a cease and desist letter. if you get this letter, you'll may want to comply with the letter, or decline to comply and risk the matter going to court, where again you'd need to argue why your "chugger" trademark is not misleading

However, if points 1 and 2 do not arise, you're sweet.

Thank you so much akula! This is exactly what I've been waiting to hear!

[snowswap]

One more question. In the united states, do you actually have to register a trademark for it to be effective? I know there is a difference between a trademark and registered trademark so what are the benefits of a registered trademark?

[akula]

Basic Facts About Trademarks

SHOULD I REGISTER MY MARK?

Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

constructive notice to the public of the registrant's claim of ownership of the mark;a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

the ability to bring an action concerning the mark in federal court;

the use of the U.S registration as a basis to obtain registration in foreign countries; and

the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

[LiquidFox]

Akula,

Has there been any recent advances in international intellectual property law? I always hear the stories of brands getting ripped off by international companies who steal their products and produce cheap counterfeits -- even though they're registered, trademarked, etc.

[akula]

yea sure. there've been developments.

whilst most countries (although not all) have their own IP laws, many of these countries are signatories to a whole bunch of treaties administered by WIPO
for example, last month, the Netherlands ratified the Patent Law Treaty.
whether these treaties protect registrants from "companies who steal their products and produce cheap counterfeits" is a moot point.
registering IP rights is one thing. enforcing these rights is another issue.
some countries are more favourable than others as far as enforcement goes

if I abused your IP rights in Australia, you have a functioning court system which you can approach to lodge your suit against me and have your day in court. whether you'd be able to do the same thing in Russia, Brazil, India or China is a uncertain.

[steveng]

i belive you need to be 30% different in your product. you will also need a trademark lawyer.if you optane a us registerd tm you are looking at 6-7 mounths out
if you plan on selling out of the us you will need a trademark for each country. frist see if the name you want to use is taken, if not go for a copy wright. you will need to do research before spending your money. copy wrights are cheep, trademarks and lawers are not. will be happy to send you to the trademark
lawyer that i used. good luck on your ventrue