How different must your trademark be?
We get this question all the time. Would a slight change to a trademark be enough to get it registered? How much impact would minor trademark changes make? What if you were to add another word or term? Let’s explore whether small changes will make a trademark more registrable.
Need to register a trademark? Find out why US patent and trademark attorney Vic Lin has an over 80% success rate in registering trademarks. Contact Vic at vlin@icaplaw.com to explore working with us.
Would adding a descriptive or generic word help you get a trademark registered?
Generic terms do not help in making trademarks more registrable. In fact, when a USPTO trademark examining attorney sees a generic word, they will typically require a disclaimer of the generic portion of the applied-for trademark.
Would a slight change make your trademark less similar than existing registrations?
The issue is likelihood of confusion, and not actual confusion. USPTO trademark examining attorneys are trained to reject when a trademark application is likely to cause confusion with existing trademark registrations owned by others.
In most cases, a slight change to the trademark will not make a significant impact. This is especially true when the goods or services in a pending application are similar or related to those in a blocking trademark registration.
When can minor changes or additions make a trademark registrable?
There is one situation where small changes or additions might make a mark registrable. When several similar trademarks are registered by different owners, one has a chance of registering another similar trademark due to slight differences. This is known as the crowded field argument.
Recognize, however, that this is not an ideal situation. You may receive an Office Action rejecting your trademark application which will require time and money in making arguments. And those arguments better be effective since there are no guarantees that simply arguing crowded field will be victorious.
Can slight trademark changes actually increase rejection risks?
Generic terms are less likely to increase the risk of a likelihood of confusion refusal. If you are thinking of adding another term or word to your trademark, keep in mind that more distinctive terms can increase the risk of rejection.
In particular, adding a second distinctive term might increase the probability of a rejection based on registered trademarks similar to the second term.
How can you find out which trademark changes will help get a mark registered?
A knockout search can be useful in identifying trademark registrations and pending applications that may block an application for your desired trademark.
If you are aware of registrations or pending applications for similar trademarks, you might want to consider new marks that are more distinguishable. Terms that are fanciful, such as made up words, generally have a better chance assuming no one else has already filed for a similar.
Another option is to consider arbitrary marks. An arbitrary mark consists of words in the English dictionary that bear no relation to the goods or services.
Lastly, consider suggestive marks which give you an inkling about the goods or services. Suggestive trademarks are great. They hint at the goods or services without telling you what they are.
Here is a helpful TMEP discussion on the continuum of trademark protection.
