Hello, I am in the process of trademarking a brand but turns out there are few brands with the same type of name. The lawyer who will submit the application informed me that there is a 33 to 50 % chance of being denied. What if instead of trademark, I register the company as Inc. and continue with the same name?
What I want to trademark: multi adventures
What already exist: Grand Multi Travel, Grand Multi Adventures, Multi The Globe
Need advise badly... thank you.
3 Answers from Attorneys
Let me preface by stating that I am concerned that you feel the need to make the effort and post your specific questions here and not simply pose it to the lawyer that you already hired to prepare your application. Perhaps it is some non-lawyer website you are working with and they cannot answer your specific legal question? If so, this can be a big mistake.
That said, much more context will be needed and no smart lawyer would extend themselves with specific advice here without the latitude top fully understand your situation, the nature of goods/services you provide, the competing mark's file wrapper, etc.
Whenever you endeavor into this , it is extremely important to conduct the proper clearance due diligence under both federal and common law here in the US. The following link offers a nice overview of this process:
I think you should consult a lawyer in private so all the facts can be clearly understood. If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed
Short answer... no. Incorporating will not protect the mark.
I need to echo Mr. Natoli's concerns. Discuss this with the attorney filing your application and/or take advantage of the free consult from Mr. Natoli.
An initial rejection by the Trademark office can be overcome through several methods, but they each have tradeoffs and consequences. For instance, a disclaimer of specific words in the mark may allow you to register, but you would not later be able to enforce your rights against others using those words in their mark. Another offer is for your mark to be registered, but on the "Supplemental Register" which similarly does not offer you any legitimate protection against would be infringers.
A corporate name filing is separate and distinct from a registered Trademark. The Secretary of State's office may similarly reject your application if there is a name conflict. That rejection will not be overcome by disclaimers or other means. I always recommend business owners obtain their LLC and then seek your Trademark or other contracts/debts once protected behind the LLC.
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