Is our brand too close to a registered trade mark?

Question

We would like to register a trade mark for our company. Some initial searching has turned up another word mark which seems somewhat similar to our brand. The owner of the registered TM is a surveying firm & consultancy in Austin, whereas we are a Californian company developing software for GIS applications.

How do we determine if our brand is too close to the other mark which is already registered? Thank you for your response in advance!

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Answers: 3 public & 1 private

Steven weinrieb
Patent Attorney

Without knowing the actual marks in question, it is difficult to render an opinion, however, there are three basic principles involved - all three are based upon the likelihood of confusion (of the source of the mark) - the first is how close are the marks in reality, the second is what are the fields in which the marks are used - you already indicated such - and the third is the strength of the mark that you might infringe. For example, if the mark is XEROX or GOOGLE, those are extremely strong marks and whatever fields the goods or services are in, there would be an immediate association with the original XEROX and GOOGLE companies. If the marks are not that strong, meaning very well/universally known, and the fields of commerce are different, then you are in a stronger position for not infringing the mark, however, again, it is difficult to truly say without knowing the actual marks.

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