If I have 2 registered trademarks that contain the same 2 words; my company name has 4 words, the other has 2 words; for example: company name: Any Time Booze Cruz, the other mark: Booze Cruz. If I cancel Booze Cruz and keep company name; but only apply Booze Cruz to goods/products sold in commerce, not the whole company name. Can I do that? or am I obligated by law to always use the full 4 words in company name on all goods listed under the class(es) registered with USPTO?
2 Answers from Attorneys
You will never get an answer here that you can rely on. You have a very specific question in a very complex area of the law that only a small subset of lawyers know anything about. You will need to get a trademark lawyer involved and pay some fee.
First, I do not see a trademark registration with the USPTO for either mark. There was a BOOZE CRUISE from New York that was abandoned, as well as other marks similar to BOOZE CRUISE. Second, for each mark, assuming you can obtain registration given the possible descriptiveness of the marks, you will need to use all the goods/services listed in the registration (and would need that to file statements of use for all of the goods/services to get the registrations in the first place). If opposed in the Trademark Trial and Appeal Board (TTAB), or challenged from a random audit from the USPTO, you could use the two-word mark as evidence of use for the four-word mark, but that is not a guaranteed proof of use. You would probably be better off maintaining both marks for the broadest coverage.
Very truly yours,
/Michael D. Stewart/
MICHAEL D. STEWART, ESQ.
Law Offices of Michael D. Stewart
The Chase Bank Building
150 SE 2nd Ave., Suite 1000, 10th Floor
Miami, Florida 33131
email: [email protected]