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Problem with trademark - REFUSAL – LIKELIHOOD OF CONFUSION

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pjK

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We are releasing a SaaS product within the month on its own domain. Before launching the new product we wanted to secure a trademark in the name. During the process we received an office action for: SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The trademark office claims we are in conflict with a competitor company/domain which is Docu*****.com while our domain is Doc*****.com (just without the "U"). For the sake of argument replace the ***** with an example word such as "Read". The trademark office also thinks customers will confusingly mistake us for our competitor.

The business area provides a very broad scope of services offered. Both pertain to document services. We are going to attempt to fight the office action in the defense that the words DOC and READ***** are two broad words having many meanings and can be used in combination.

We want to use the domain at any cost as it is a crucial part to our business. I am afraid that if the trademark office rejects our amendment or actually moves it into the opposition period that our competitor will attempt to fight us for having a similar name.

I am now entertaining the idea of creating a limited liability company in the name. Originally it was operated under another business name. Would that offer any protection from potentially loosing the name or domain? If we do not have a trademark how much of a chance does our competitor have at successfully making us C&D the use of our domain name? What are our options?

Thanks
 
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Theo

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First of all, an initial refusal is not the end of the world. It might mean that you have to define the scope and category application of your mark VERY carefully.

Are you utilizing an IP attorney? If not, you should.

Is the mark being used already or will it be used in the future?

With regards to protecting the domain via the means of forming a corporation, you might consider a) forming the corporation overseas and b) obtaining a mark overseas

There are several places for speedy registration of marks; an attorney would give you proper responses - I am not one, nor do I play one on TV :D
 

pjK

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Part of the refusal letter explains that modifying the scope for approval is prohibited.

We are using an IP attorney who is arguing on our behalf that the two words are broad and that there were similar marks approved. He is not very hopeful in us getting it though he believes it is in direct conflict.

The mark is not being used pending our trademark application, we might use a name temporarily until we hear back from the trademark office. I want to keep our company name low key in case our competitor wants to oppose us.

Forming the corporation overseas and obtaining a trademark overseas was an idea I was considering. It seems like a complicated process so I have been steering clear of that so far.

Speeding up the registration of our mark would help greatly :) if anyone can point me in the right direction I'd appreciate it. Thanks for the response Acro.
 

Theo

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Unfortunately that's the problem with not having established prior use at the time of application; from my personal experience it stands a better chance of receiving a refusal. However, you should be able to adjust the classes applied for. With regards to obtaining a mark faster your second best bet is to start using it in products or services and obtain a local (state) mark first or alongside a foreign mark. There are countries that offer "convenience marks" which don't necessarily diminish their value when it comes to, say, defending a UDRP.
 

pjK

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very helpful information, thanks again Acro!
 
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