If a company has a trademark (wordmark) on the name "BIOLOGIE" and that company manufactures supplies for biologists...can I successfully re...

Question

If a company has a trademark (wordmark) on the name "BIOLOGIE" and that company manufactures supplies for biologists...can I successfully request a trademark (wordmark) for the name BIOLOGIX, which is a website that simply lists companies that sell biology supplies from around the world?

I don't know if the names are believed to be too close? Thank you.

Answer

Maybe. There are arguments that can be made either way. What really matters most is whether this company (biologie) considers it too close. Would you? If so, they are free to oppose or petition to cancel even if the USPTO approves your application. A name like Biologix will be saturated so you really have to clear this well and it is not a DIY kind of project. Ultimately only your own trademark lawyer can offer the kind of specific and actionable advice you are seeking on the mark.

Further, whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark:

http://www.lanternlegal.com/trademark_due_diligence.php

http://www.lanternlegal.com/test_trademark.php

If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient. Our firm is now referred by the American Bar Association (see under the New York section):

http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html

Kind regards,

Frank

www.LanternLegal.com

866-871-8655

[email protected]/* */

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

Answer

Without denying the accuracy of everything Mr. Natoli says, I would like to point out that trademarks are specific to product categories. An example I often use is that the name "Purple Passion" could be trademarked separately, without conflict, for lipstick, house paint and Zinfandel. I suggest having your intellectual-property lawyer look at which product categories "Biologie" is registered under, and whether "Biologix" would be in a different category of product or service. Seems likely, since they are dealing in "stuff" while your business is providing a "service."