Can my trademark contain a trademarked word?
We in Bonamark.com recommend creating a unique trademark; it will have more chances to register. But what if you want to use a part of an existing trademark?
Speaking in general, the possible use of a trademarked word in your trademark depends on many factors:
- Is the trademark strong? Coined words are strong trademarks; Xerox, Kodak, and Adobe. Descriptive words are weaker (“Fast Horse” for delivery services, the word “fast” describes a quality of the service and, in some cases, can be used in other trademarks). It’s less likely that a strong trademark will allow a similar trademark to coexist even for different services or products.
- Is the trademark well-known? Even a descriptive well-known trademark will likely be a problem for anyone using a part of the famous brand in their trademark.
- Are the services or products of the trademarks similar? A regular, not famous trademark can coexist with a similar or even identical trademark, if it is for completely different products, like dog food and furniture.
- Is the owner aggressive? The key question! Some trademark owners act as if they must attack every similar trademark they stumble on. I know that trademark owners must protect their marks, but what about common sense? A milk producer attacks a fisherman’s store just because he can. What kind of confusion can be caused?
If you wish to use a part of a trademark in your trademark, answer these questions. If you answer yes to any of them, then consider choosing another trademark.
If you have any questions regarding your trademark — contact us.