Misspellings and Other Changes to Get Around Someone Else's Trademark

Could you overcome Microsoft's trademark if you applied for M1CR0~5OFT?

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TRANSCRIPT

It's not uncommon for us to do the search for our client, and we identify a trademark that is an obstacle for our clients registration of theirs, because they're too close. There's an overlap on goods and services. The marks are similar, and often we get this proposition, "Well, how about if we just make a few little changes. What if we add "the", or we add some misspelling, or we add a dash in the middle," something like that. Something very minor and, "Would that be sufficient to overcome the objections from the Trademark's Office?"

And, we usually advise against something like that for several reasons. First of all, those small changes may not be sufficient to overcome the objections. And, the stronger the other trademark is, the less likely you'll be successful in overcoming the Trademark's Office's objections. The example that I always use just to illustrate how this works, is Microsoft.

Let's say, if I wanted to start a software company, and call it The Microsoft, or replace all O's in the name with zero's and all I's with ones, so it still looks like Microsoft. I could come up with all sorts of, or add a dash between "Micro," and "soft," it's still the same name. It's just a slightly changed name. And, the Trademark's Office is not going to have it, and Microsoft is not going to let you have it.

So, when you think, "Well, let's just add this little thing," always have this Microsoft example in the back of your mind, because it just makes things so absurd that you will easily be able to see how likely it is that you'll be able to overcome the Trademark's Office's objections, with your little change.

The other reason why it's never a good idea, is this; let's say you were successful in overcoming the Trademark's Office's objections. You figured out a way to add just a little bit, and you narrowed down the products and services. You were able to convince the Trademark's Office that there is no confusion between the original mark and your mark. That it's just the same thing with small variations. Let's say you were successful. Yes, you can celebrate this for a little while, but what's going to happen when somebody else brings a very similar mark? It's not the same as the first one. It's not the same as yours, but also some minor variation. You will not be able to use your trademark to go after them, because they will have a legitimate argument. Well, if you were allowed to get your trademark through, and your argument was that the difference between the old brand, the original brand and your brand, is sufficient to not confuse the market, then their changes also should be treated as sufficient, to not confuse the market between their brand, the original brand, and your brand.

So, you end up with having a very weak trademark that really you don't, you can't do much with. Trademark is never the end goal, as much as it's fun to put the trademark certificate on your wall and celebrate it. It's great, and that's what my business is all about, is to deliver you those certificates. As much as this is fun, the trademark registration certificate is not the end goal. It's the tool to allow you to build and maintain a competitive advantage. It's a tool that allows you to claim on the market that you are the only one who has this brand, who has this method, who has this product, who has this service, and if you can't do that, if you can't use that certificate to stop everyone else from using the similar name for their products and services, what good is that?

So, if after doing the trademark search, you realize that there's another brand that's too close to what you wanted to have, and you can't cancel that other brand, instead of trying to make tiny little changes to see how far can you nudge the Trademark examiner towards the decision that, "Yes, okay," that the two marks can coexist, often the better solution is to go back to the drawing board.

And, look, I understand how painful it is, but sometimes it's better to go back to the drawing board, and come up with something completely different, and get something that you can actually own. Get something that you can enforce, and get something that you can build your legacy on.


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

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