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  • Writer's pictureSheila Gibson, Esq

So you've got a brand . . . Now what?

You've thought of a catchy name and fallen in love. You've searched it and no one else is using it! You've purchased the domain name. You've hired a designer and have an amazing logo! You're on your way to building your brand! What could go wrong?⁣ You know you cannot use a mark that is identical to an existing mark on the same goods or services. Did you also know you cannot use a mark that is "confusingly similar" to an existing trademark. What exactly is "confusingly similar"?⁣ There are 8 factors used in determining whether a mark is confusingly similar to another, the first 3 of which are most often discussed:⁣ 1. Strength of the mark -- Many people mistakenly believe that a "strong" mark is one everyone is going to want to use. Actually, marks are placed in one of the following 5 categories in order of strongest to weakest: Fanciful (made up words), Arbitrary (think BANANAS for toasters), suggestive (the mark suggests the goods or services), descriptive (the mark describes the goods or services), and generic, which are not protectable (think bandage for bandages).⁣ 2. Similarity of the goods or services -- Examiners look not only at the class of goods or services but also compare the descriptions of the goods and services.⁣ 3. Similarity of the mark -- Examiners look at sight, sound, and meaning. Thus, changing a "c" to a "k" or an "i" to a "y" would result in the same or similar sound (phonetic equivalents), and common foreign language terms (e.g., agua for water) will be translated into English for evaluation.⁣ Given all of that, it is important to have a trademark attorney run a comprehensive trademark search for your mark before you invest time and money building your brand. A comprehensive search also looks for variations that might be considered "confusingly similar." This avoids potential problems down the line such as inadvertent trademark infringement or inability to obtain a trademark registration that could cause you to have to rebrand.⁣ **This is for general and educational purposes only and is NOT legal advice. For legal advice, contact an attorney or book a consult with our firm**

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