If I’m interested in registering a trademark that has already been registered by 2 different companies, is it still possible to register the trademark if I’m in a different sub-category?

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If I’m interested in registering a trademark that has already been registered by 2 different companies, is it still possible to register the trademark if I’m in a different sub-category?

My product (as well as their’s) is in the general food category but my product is in a different subcategory from either of their products.

Asked on July 7, 2015 under Business Law, Washington

Answers:

SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 5 years ago | Contributor

It is unlikely, but not impossible, that you could register it: even if you are in a different "subcategory" of food, the fact that you are still in the food "space" means that there is a reasonable likelihood of consumer confusion, and trademark registration will not be granted in the face of a reasonable chance of customer confusion. There are ways you can increase your likelihood of success, such as by:

* Alterating spelling

* Registering not just a work or slogan as a mark, but the word or slogan in conjunction with a unique graphic and/or typographical treatment (this narrows the mark's effective protection, but by narrowing it, also reduces the likelihood of confusion)

* Registering your main mark in conjunction with a subheading or title, so that the combination is more distinctive.

What mark to go with is a significant decision for a business, since you will invest marketing and advertising dollars in it, as well as put it on inventory or products. You are advised to consult with an intellectual property attorney and let him or her guide you in selecting a defensible, registerable mark.


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