Legal Question in Intellectual Property in Connecticut

Your questions raise two very important issues: a) What is a disclaimer, what does it mean for the trademark registration owner who had to comply with the trademark office�s request for a disclaimer, and what does the disclaimer mean to you; and b) can you use the term RUN DMB in view of the federal trademark registration RUN DMC.

Dealing with the second issue first is easier. Off the cuff, and without further information, the answer is, �You cannot use the terms RUN DMB if as a result of such use consumers can possibly be confused that your use was somehow approved of, or affiliated with, or authorized by or connected to RUN DMC.�

The courts have developed a multifactor test on how to determine whether a consumer can be confused. The factors include the strength of the senior mark (in thIS case the senior mark is RUN DMC and it is plenty strong); whether the marks look the same, whether they sound the same and whether they convey the same commercial impression (in this case just changing the last letter from a �C� to a �B� is so minimal it makes no difference); what are the goods and services in connection with which each of the marks is being used; the intentions of the junior user (in this case, you); the routes of trade where the goods and services will be travelling; the price range of the goods; the sophistication of the consumers; any actual incidents of confusion that have already occurred, and so on. The list of factors is not exhaustive and sometimes one factor can make or break the case.

Applying this multifactor test to your question and without having any further information, it is our opinion that you will get yourself into trouble if you use the mark RUN DMB.

Now, for the first issue: in your case, what that disclaimer means is that you can use the term RUN however you like, so long as it is not confusingly similar to RUN DMC.

Finally, yes indeed a company can trademark abbreviations DMB in as many fonts as it wants.

Good Luck!