Trademark question

[jaewing]

Any of you lawyer types good with trademark law? With out going into too many details I want to trademark a name, which I will call widgets. Widgets is a Spanish word with an English translation (just pretend ok ;-)).

Looking through the http://www.uspto.gov search a company has “widgets” trademarked to sell a liquor. I would like to use the same name to market a brand of cigars. Could using this name subject me to a dilution lawsuit down the road? Or am I ok because this is a common word found in a Spanish dictionary?

I am not very well versed in trademark law but this is what I do understand. If your product will cause confusion in the marketplace, either that the two items are the same product or that they are made by the same company, then you may have a problem. Remember WWF (wrestling) and WWF (World Wildlife Fund)? Guess who won that suit . . . now there is no more WWF (wrestling) and they are called something else.

Just because it is a common word will not get you the right to use it for a product if someone else has already done so. When you go to the store do you buy cotton swabs or "Q-tips", do you buy facial tissue or "Kleenex"? When you have a headache do you ask for Tylenol or Aspirin . . . both are trademarked names (as are Q-tip and Kleenex) but we all use them as common names to refer to any number of similar products.

You can try contacting the legal department of the company that currently uses that name and see if you can fget permission to use it for cigars. You can contact a trademark attorney to get advice on your rights and liabilities with regard to your proposed plan. Both wouold be good first (and second) steps to take before opening yourself up to a potential lawsuit.

Hope this helps.

- Jason

p.s. - OK that took me 5 minutes to write . . . at $250 per hour you owe me $20.83 for legal advice.

[8-5-8]

p.s. - OK that took me 5 minutes to write . . . at $250 per hour you owe me $20.83 for legal advice.

And there I was thinking Jason was a decent guy and then the lawyer in him comes out to play! j/k of course... I have a couple lawyers in the family and man are you guys lifesavers...

[Crickett]

We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark . . . .
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used . . . .
10. The market interface between the applicant and the owner of a prior mark . . . .
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion . . . .
13. Any other established fact probative of the effect of use.

Id. at 1361, 177 USPQ at 567. Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of the factors may control a particular case," In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).

Going to a lawyer for consultation sounds like a safe bet for ya there hex.

[jaewing]

Going to a lawyer for consultation sounds like a safe bet for ya there hex.

Outstanding post there Cricket! I learn something new everyday.

EDIT: I meant to capture the entire post not just your comments. The info (and the advice) is very good.

[hex1848]

p.s. - OK that took me 5 minutes to write . . . at $250 per hour you owe me $20.83 for legal advice.

LOL, so I just got charged $20.83 for a yellow pages referral....



(insert bad lawyer joke here)