How close can I get to someone else’s trademark? Someone asked me that question this weekend and I am going to answer her question here. 

So here’s the question. I’ll read it. “I have a question regarding trademarking. I filed for a trademark today, but I’m nervous. I’m going to get refused because of a likelihood of confusion. Does PRETTY LITTLE WINKS and PRETTY LITTLE WINK seem too familiar to you? Thank you for your help, if possible.”

Well, here’s the deal. If the goods are similar, then we have to evaluate how similar the marks are. So we have two marks here. One is PRETTY LITTLE WINKS and the other is PRETTY LITTLE WINK, so if those goods are the same, then those two marks are going to be confusingly similar. So we have to evaluate the junior mark — that’s the the second trademark to be filed or the proposed trademark — and the senior mark, that’s the one that’s already been applied for or has already been granted.

If those two trademarks are similar, the junior trademark will be refused, because if the goods are similar, then it’s very likely that they are going to appear next to each other on a shelf, in a store somewhere. And a consumer looking at those two brands might wonder if those two products come from the same company. The consumer might, upon seeing the two trademarks, wonder if PRETTY LITTLE WINKS  and PRETTY LITTLE WINK are from the same company. If as a consumer, I’m confused  as to whether these two products come from the same source, from the same company –and I think in this case the consumer would indeed be confused — then we say that the junior trademark infringes upon the senior trademark and it will not be issued  by the Trademark Office.

In addition to that, it is likely that if you’re the junior user and you continue to use it, despite having been refused registration by the trademark examiner for being confusingly similar to the senior mark, it is very likely that at some point in the future you’re going to get a cease and desist letter from the senior trademark holder. 

A cease and desist letter says, effectively, “Hey, please stop using this trademark that you’re using because it’s likely to confuse people into thinking that your goods come from our company. And we don’t want that because we want to be able to control the quality of our goods that are being offered. And if people think that your goods and our goods are the same and your goods are kind of crappy, it’s going to reflect poorly on us. We would like you to stop using that name because we don’t want people to think that your goods come from us.” That’s a classic case of trademark infringement.

So I’m sorry to say that in this case, I think this user should stop using this trademark and pick another mark immediately. And to avoid this in the future, do a trademark search in the U.S.P.T.O. database to make sure that somebody isn’t using a mark that is confusingly similar to the one that you have proposed using.

I’m Angela Langlotz trademark and copyright attorney, and you can find me online at Trademark Doctor Dot Net or on YouTube. I have over 400 videos now on YouTube, so you can probably find an answer to your trademark or copyright question there. If you have a specific question for me, you can drop it into the comments below and I will answer it on a future live video.

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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.