Does partial phrase count as infringement?

質問

I have started a new business and now that I have customers, I am formalizing our brand name. I'll use fake words, but the real ones match the pattern exactly. Our company is currently called 'Sanctuary25' and we have rebranded to be called 'Group Sanctuary'. We purchased the domain names, filed llc, etc [including the .com]. We started researching the trademarks and found a trademark already exists with the service mark "Group Sanctuary Marketing". We want to get a trademark on just "Group Sanctuary" but are concerned that it would be flagged as infringing. Any comments or suggestions?

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回答: 2 public & 0 非公開

Steven weinrieb
弁理士

Sorry to have to break this to you, but if the SM Group Sanctuary Marketing is already registered or even in use, there is no way that you are getting a SM for Group Sanctuary - particularly if you are in the same lanes of commerce. Save yourself a lot of problems and choose another mark. TM infringement is based upon the likelihood of confusion in the marketplace - so if company A has the mark Group Sanctuary Marketing and company B wants to use/get a TM/SM for Group Sanctuary, there would obviously be definite confusion in the marketplace because you are effectively using the same mark, even though you are not using the word "Marketing" with your mark. You have not stated what your services are, but maybe you can use "Group" with something else because "Group" is a very common word so the uniqueness of the word "Group" is not that great. "Sanctuary" is a much rarer word/term, so even if you use some other word with "Sanctuary", you may run into problems. As I said, the best advice? Use another mark. The more fanciful or "made up" a mark is, the more unique and stronger the mark. Think of XEROX or GOOGLE - these words/marks had absolutely no meaning until their respective companies starting using them as TMs.

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