Can I Register as a Trademark a Logo Using a Word in Someone Else’s Mark?

Logo or Design Mark Registration: Appearances Aren’t Everything! 

trademark a logo
Image by klimkin from Pixabay

Trademark Protection is intended to protect consumers by offering a “guarantee” of the source and quality of a product or service. It is not intended to protect a design or phrase on an appearance level for the benefit of its owner or creator. 

Trademark differs from copyright protection in this respect. 

That being the case, simply adapting a word from a portion of an already-registered “word mark” into a logo format or design will not stave off allegations of a likelihood of confusion (with the other trademark) office action from the USPTO examiner assigned to your application file, or from infringement allegations from the owner of the existing mark. 

For example, if you sell caffeinated, carbonated soda and design an interesting logo incorporating the word “COCA,” the possibility that consumers would confuse your product for that of the Coca Cola product is reasonably high. That your logo may resemble Superman’s chest insignia rather than the familiar Coca Cola cursive script is not likely to be terribly relevant. 

However, if you are selling “COCA”-branded ATV hubcaps, there is little possibility that soda pop consumers will try to drink one of them. It is not likely that the two products would be confused, and the odds of your trademark application receiving push-back from the examining attorney at the USPTO or the legal team working for the Coca Cola corporation. 

If there is some product or market-overlap, a prior registered mark is going to impede your registration’s progress, unless you can prove that yours was first in use, possibly via litigation. 

Words matter, particularly with regard to trademark registration. 

If you are seeking to register for trademark protection for your logo or wording, Attorney John Hilla would be happy to speak to you about your business, your long-term goals, and your particular mark at (866) 674-2317.

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