Can a trademark that initially passed measures such as the “similarity” and “likelihood of confusion” tests later be considered infringing?

Get Legal Help Today

secured lock Secured with SHA-256 Encryption

Can a trademark that initially passed measures such as the “similarity” and “likelihood of confusion” tests later be considered infringing?

Say that one wants to issue a trademark that is similar to another: If the proposed trademark is not considered “confusingly similar” and passes through “Similarity” or “Likelihood of Confusion” tests and is subsequently issued, can it later be revoked? In other words, once a trademark is issued, can it later be revoked or considered infringing and subject to a lawsuit? Should there be any worry that the trademark could later be considered infringing and the party holding the trademark could be subject to a lawsuit?

Asked on September 4, 2011 under Business Law, Minnesota

Answers:

FreeAdvice Contributing Attorney / FreeAdvice Contributing Attorney

Answered 10 years ago | Contributor

Just because a state's secretary of state's office of the United State's Patent and Trademark's office has approved a trademark application of an individual as not being "confusingly similar" to any other registered trademark, there is always the possibility that another person could claim that the subsequent registered trademark is confusingly similar and infringes upon his or her product by being "confusingly similar".

However, when one receives state of federal approval of a trademark and there is litigation down the line by someone claiming that the subsequently registered trademark is confusingly similar, the prior approval eliminates any claims of malice and ill will typically claimed in such a lawsuit.

Just because there is approval for one's trademark, there is always the possibilty later on that someone can claim infringement leading to litigation.

Good question.


IMPORTANT NOTICE: The Answer(s) provided above are for general information only. The attorney providing the answer was not serving as the attorney for the person submitting the question or in any attorney-client relationship with such person. Laws may vary from state to state, and sometimes change. Tiny variations in the facts, or a fact not set forth in a question, often can change a legal outcome or an attorney's conclusion. Although AttorneyPages.com has verified the attorney was admitted to practice law in at least one jurisdiction, he or she may not be authorized to practice law in the jurisdiction referred to in the question, nor is he or she necessarily experienced in the area of the law involved. Unlike the information in the Answer(s) above, upon which you should NOT rely, for personal advice you can rely upon we suggest you retain an attorney to represent you.

Get Legal Help Today

Find the right lawyer for your legal issue.

secured lock Secured with SHA-256 Encryption