An educated approach to intellectual property law

  1. Home
  2.  » Trademarks FAQ

Common Questions About Trademarks

If you are considering applying or registering for a trademark, the following questions and answers might interest you. The Wiener IP Firm, LLC, in Stafford, represents and assists individuals and companies through the entire process. Below, attorney Wiener shares some information that might help you commence the process.

What is trademark infringement?

Trademark infringement is not based on identical trademarks and identical goods or services. Confusion need only be likely. This standard is called a “likelihood of confusion.”

The trademarks are required to be similar.  The similarity of trademarks are considered on their appearance, sound, connotation, and commercial impression.  Any one or a combination of these factors could cause extreme similarity/ies between trademarks.

The goods and/or services need only be related in some manner. A weighing process occurs of how similar the trademarks are versus how related the goods and/or services are. One factor may weigh more heavily than the other.

Beyond these 2 major factors are other less significant factors that may influence a particular decision, including:

  • The potential trade channels of the goods or services;
  • The strength or weakness of each of the trademarks;
  • The sophistication of the purchasers.

What are only a few of other potential substantive refusals?

Mere Descriptiveness/Generic Refusals:

The “mere descriptiveness refusal” is based on whether the trademark describes a feature, purpose, characteristic, among other aspects, of the goods and/or services.

The “generic refusal” is based on whether the purchasing public would assume that the trademark is actually the good or service. Such a trademark cannot be registered under any circumstance.

Why must elements in a trademark application be entered carefully?

If a part of a trademark application is not entered correctly, it may not be able to be changed after being filed.  For instance, the trademark itself must be entered correctly.  Once an application is filed, a trademark cannot be amended, except in perhaps the rarest of circumstances.

The goods and/or services in the submitted application must encompass the entirety of the scope of what the applicant uses in connection with the trademark.  Amendments to the goods and/or services cannot exceed the scope of the goods and/or services as originally filed.

Call To Address Your Concerns And Start The Process

Obtain the legal guidance and help of a former USPTO examiner. Call the Wiener IP Firm, LLC in Virginia at 703-982-7601 or fill out this online intake form to schedule a free initial consultation with attorney Michael Wiener.