When is my trademark too similar to a competitor's mark?

I am afraid that you will always need a lawyer who is specialized in trademark law to answer the question whether there is a liklihood of confusion between two marks as there are many factors (structure of marks, nature of words, claimed goods/services etc.) and thousands of decisions by the courts that have to be considered. As soon as you have found a name, a professional trademark search should be conducted to see whether there are any identical or similar marks that you could infringe by using/registering your mark.

In general, the law of trademarks provides that the first company to secure a trademark can preclude others from using on the same or related goods or services the same or a simiilar trademark if it is likely to confuse prospective customers as to the source or sponsorship of the goods or services.

Note that trademark law developed before there was global marketplace, and that each jurisdiction applies its own specific principles as to when and how a trademark is secured. Thus two different companies serving different geographic markets might have independently adopted and secured valid rights to the same or very similar trademarks for the same or similar kinds of goods.

In the United States, there happen to be various ways to secure trademark rights. The gold standard is to register the trademark with the U.S. Patent and Trademark Office. But it's also possible under U.S. law to develop rights in a trademark just by putting it on the company's goods and selling them widely, without registering it. This kind of right arises under the "common law." And to complicate the matter even further, each State of the U.S. separately accepts registrations of trademarks, typically where the registrant is planning relatively local use of the trademark.

Trademark rights in a majority of countries other than the U.S.A. typically are secured by registration with the government. And the standards applied in various jurisdictions for determining "how close is too close" aren't entirely uniform.

To answer your question, the first step would be to engage an attorney with experience in trademarks and seek an opinion on the availability of your proposed trademark in the jurisdiction(s) you expect to market in.

Intellectual property is one of those areas where hypotheticals don't work. We need to compare the actual marks.

The good news, however, is that now you can request your FREE trademark search in Canada and U.S. conducted by a registered trademark agent. This goes way beyond what you yourself can find by looking up legalzoom or similar websites.

Just go to http://freeTMsearch.com and fill out the form there.

Andrei Mincov
Creator of the Trademark Factory®