But there is already a "Second II None" that is trademarked. Is it possible if I can Trademark my name "Second II None Sports Apparel" since its a different name? What are your suggestions? I really want to work with my brand name.
William F Lang IVPatent Application AttorneyBeaver, PA ·
I checked the registration, and the goods are the same. You will not be able to use this trademark by adding a generic description of the goods to the name. Such additional language adds no inherent distinctiveness. So, you are going to have to pick a new name.
In selecting a new name, try to choose something that suggests, rather than describes, a quality of the goods or services, or which has no apparent connection to the goods or services. A descriptive mark is not entitled to trademark protection until it becomes associated in the minds of consumers with a source of goods or services, which is called acquired distinctiveness or secondary meaning. Typically, this requires five years of continuous, substantially exclusive use, but more may be required in the case of a highly descriptive mark. A generic mark, which describes a class of goods or services, is never entitled to trademark protection. A suggestive or arbitrary mark, which is inherently distinctive, is entitled to immediate trademark protection.
Before adopting a trademark, I always recommend a full trademark search and clearance opinion. The search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. This process is significantly less expensive than responding to a cease and desist letter, particularly after thousands of dollars have been spent on advertising materials, signage, etc. bearing a given trademark.
If the search results are favorable, then an application for federal registration should be promptly filed. This can be done based on a bona fide intention to use the mark, but actual use of the mark is required in order to complete the registration process.
Sorry, but I must agree with Mr. Lang. The doctrine is "first in time, first in right."
And the slight change you are discussing wouldn't be a sufficient distinction.
It would likely be considered trademark infringement or passing off. Perhaps, a difference in goods or registration under a different class could work as a defense, but not in your case. Confusion would result if you used the mark and would lead to an inference of association. The deceptively similar/identical mark used for similar goods would cause confusion and the impugned mark would get associated with the registered mark. Distinctiveness would be an issue.
"Second II None" is already trademarked - but for what goods/services?
You'll first want to commission a full/comprehensive trademark clearance search and opinion of your proposed trademark before you adopt using the mark in association with the sports apparel you plan to offer. Your goal with this clearance search is to identify potential mark and trade name users who might sue you if you adopt a confusingly similar mark, oppose your efforts to register your desired mark, petition to have your registered mark cancelled, and/or serve as a basis for the USPTO refusing registration of your proposed mark.
This is because trademark rights in the U.S. arise by use of the mark in association with goods/services - where the first users of a given mark for given goods/services has the best claim for that mark in that context. Thus there can be both unregistered trademark holders (what we call common law mark holders of common law marks) and registered trademark holders.
The clearance search is designed to locate the same and confusingly similar marks and trade names. However, note that a finding of confusion is heavily fact dependent where a number of different factors may come into the analysis, one of which is similarity in the two marks being compared. Another very important factor is similarity in the goods/services. For example, consider the famous marks of DELTA, one of which is a mark for an airline and another for a line of plumbing fixtures - no confusion here although the marks are identical, because there is no similarity in the goods/services.
In short, the only safe way to proceed before adopting a given mark is to commission the full/comprehensive clearance search and opinion and then proceed on an informed basis.
This would be analogous to trying to register a trademark for "McDonald's Hamburgers" or "Nike Running Shoes." You would be wasting your money on the registration and you would probably get sued as a result. Here's a better idea: select a mark that is fanciful and that does not give rise to a likelihood of confusion with another mark.
