質問
A partnership I am involved with had its trademark application initially rejected by the USPTO, a non-final office action for which there is an option to appeal. The details of the case can be seen on the USPTO website, case #86476977. The gist of the rejection, from what I can tell, is that the combined name and class create a likelihood of confusion because of a previously approved mark (U.S. registration #2680991)
I can see the argument for the likelihood of confusion with the pre-existing mark. But the examiner provided 30+ examples and I honestly have a hard time seeing the issue in quite a few of them. In many cases the example's font matches the font used in our application, even though our application was for a standard character mark and we agreed that "The mark consists of standard characters, without claim to any particular font, style, size, or color." In other cases the application's font does not resemble the example's font whatsoever, nor does the name/word mark. The only commonality is in the goods and/or services.
As to the pre-existing mark representing example #1 (registration #2680991): is there a suggested way to retain our preferred name and class without running afoul of this existing trademark? That word mark = "SIX" with goods and services specific to distilled vodka, whereas our preference is to offer a range of distilled spirits including, but not limited to, vodka. Might we pass on appeal if we offer our vodka under a different name, but retain the name SixSpirits for the remaining types of spirits?
回答: 2 public & 1 非公開
"Might we pass on appeal if we offer our vodka under a different name, but retain the name SixSpirits for the remaining types of spirits?"
An application for SixSpirits brand gin, or tequila, or another type of alcoholic beverage will likely face a similar, if not identical, rejection under DuPont factor analysis. If you decide to market your vodka under a different name, whether you may obtain a registration for that name will depend, of course, on what that name is.
Your example underscores the need to involve trademark counsel or, at a very minimum, thorough trademark clearance activity.
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