Legal Question in Intellectual Property in California

If you are registering a trademark do you have to concern yourself with the different variations of it, particularly when hyphenated? From what I read it is suggested that you do not hyphenate trademarks, but how do you protect yourself from someone hyphenating your trademark


Asked on 2/21/10, 5:17 pm

2 Answers from Attorneys

Richard Jefferson M.E.T.A.L. LAW GROUP, LLP

The standard that the United States Patent and Trademark Office ("USPTO" uses to evaluate whether a certain trademark can be registered is that the mark is not "confusingly similar" to an existing registered mark. If you have a word mark registration and someone comes along and tries to register the same word but just uses a hyphen (or spells it a different way) then that new application will be refused. This typically holds true by international class...but sometimes can hold true across classes.

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Answered on 2/26/10, 5:46 pm
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

I agree. A change as trivial as additional punctuation, or changing "and" to "&" or "One" to "1" is almost assuredly not going to create a separate trademark or insulate a competitor from an infringement action (assuming the products or services are in the same or closely related international classes.

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Answered on 2/26/10, 8:08 pm


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