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Will Text Style be Enough to Distinguish Mark in same Service?

Posted by . updated on 11/11/2009
Im new to trademark law but have read through www.uspto.com to ask, i would hope, an intelligent question to the forum.

I have a few questions.  My company is a one person LLC that will provide quality assurance consulting services.  My company name is XXX Consulting, LLC.  "XXX" will represent my companies true name.

I did a search on the USPTO database, using XXX.  I looked through all the LIVE hits, and found a company that has registered XXX for use in the same Service Industry (35).

What I am confused about is this....when I am applying for a Trademark related to my company name:

1) does the drawing/logo im submitting have to contain the full text "XXX Consulting"? (my full LEGAL NAME?)  or can it just contain the first portion  "XXX"?  (I had to file as XXX Consulting in my state as XXX was taken)

2) if i do not want the logo to contain the word Consulting at the end, will the STYLE of the XXX text itself help to avoid a trademark infringement with the other company that has also registered XXX?  My text in XXX will have transitional colors, and most likely the last letter will have the shape of an arrow on the last letter  (The last letter is a "d", the top of the "d" will have an arrow shape pointing up) which the other company does NOT have

3) the other company primarily sells Memory devices, im selling quality system consulting services.  is that alone enough of a difference to a) avoid a lawsuit with the aforementioned company with the similar submission of XXX, and b) enable me to file for copyright protection from other consulting companies?

Thanks for the educated opinions in advance!



Answers (1)
 
JSonnabend
While it is impossible to give anything approaching definitive answers to "will mark X conflict with mark Y" based on hypotheticals (search the forums for "likelihood of confusion" or even "hypotheticals" for a whole bunch of threads on point), I can say this much from your post: you would be well served to pick a new name, I believe.

Generally speaking, differing typeface or additional of graphical elements will not suffice to distinguish two identical names in similar fields.  Furthermore, you already know that, in your state, at least, there exists another registered company with the same name as well.

A mark is only as valuable (and useful) as its ability to uniquely identify a single source of services.  I question your mark's ability to do that based on what you've posted.

On the other hand, if you truly believe your services are significantly distinguishable from the senior users' services (or goods), then you may be able to use your mark.

- Jeff
 

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