My company is in the process of naming a product and it's associated product line. We plan to combine the two names together to complete the name for each individual product in the product line such as "Product line: Product".
Two questions arose here:
Can we use punctuation, such as a semicolon or dash, in a trademark name? and If the trademark for the product line name is unavailable, can we still use it in this combined format ("Product line: Product")?
2 Answers from Attorneys
I do not mean to sound rude or arrogant, but based on your questions, I don't think that you understand the rules and laws that govern both the trademark process as well as trademark protection, Filing for and maintaining trademarks is a very technical undertaking and, as such, most people do not truly understand all of these technicalities and how strict the Trademark Office is in its application of every nuance and requirement of every federal statute and rule of practice. Thus, I would highly recommend that you retain an attorney who is well versed in the area to assist you in the process. The questions you have asked are a perfect example of why you need the help of an attorney. As to the first part of your question, I can tell you that semicolons are among the character set of supported characters, thus can be used in a trademark. As to the second part of your question, all I can say from a legal standpoint is - it depends (yes, you can always count on an attorney saying that it is a definite maybe). There are numerous legal issues that have to be addressed before your question can be answered. For example, does your product compete with the existing market and, if not, is there any possibility that, in the future, the holder of the existing mark might expand into an area that would compete with your product. There is also the practical issue of why you would want to establish product recognition under a mark that already exists, even if your products don't compete with those of the holder of the existing mark. Even if the trademark is available for your use, the application process is, as I said, very technical and exacting. This is even more so if you want to get international protection of the mark under the Madrid Protocol, which is highly recommended in an age where platforms like Amazon sell throughout the world. I would be more than happy to talk to you at greater length about this. If you feel so inclined, you can call my office at (585) 458-7620. If not, I still highly recommend that you retain counsel who can negotiate the minefield of rules and regulations you must negotiate before you are granted a mark, as well as assist you in maintaining the mark once it has been granted.
Yes, you can use a semicolon or dash in a trademark name.
The underlying issue in trademark is whether there is a likelihood of confusion in the marketplace (would an average consumer think that your product originated with someone else or vice versa). The owner of an existing trademark would probably challenge your mark if there was even a remote possibility that your name was similar to theirs, regardless of punctuation. So the answer to your second question is most likely 'no.'
Before you spend too much time and money on branding, you should speak with a competent trademark attorney who can do a trademark search and advise you whether you would have a potential conflict.
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