Hello,I'm considering submitting a trademark application for a moving services company. The name of the company is Pack-Men Moving Services.What are my chances of being denied for likelihood of refusal based on the already registered "PAC-MAN"?If the chances are likelihood is high, do you think I could reduce the likelihood by removing the "-", thus making the name "Pack Men"?Obviously the two businesses/marks don't share the same goods/services profile, but I'm not sure if the USPTO will decline my name based on the long standing PAC-MAN trademark.Thoughts?
State/Country relating to question: United States
Hi. I can help you answer this question.
If there are no other similar marks to "Pack-Men Moving Services" in the same category and class as the one that you are applying to then you should not have an issue. No reasonable person would confuse Pac-Man the video game with a moving service with the trade name Pack-Men. You should be fine.
The removal or addition of the "-" will not make a difference.
Hi. Please let me know if that sufficiently answers your question.
Great! Definitely makes me feel better.
I'm going to just submit Pack-Men as the trademark term and submit under the moving services goods/services. Is that ok?Rather than submitting the Pack-Men Moving Services as the term.
That is fine. As long as there are no other conflicting marks already registered.
And it is better if you will brand yourself just as "Pack-Men" rather than "Pack-Men Moving Services"
IP Attorney. JD and Masters of Law in Entertainment Law.
Thank-you for accepting my answer. I hope that I have sufficiently addressed your concerns. If you require further assistance with filing your trademark please feel free to contact me directly at XXXXXXX@XXXXXXXXXXXX.XXX.Regards,Bridget Hauserman, Esq.
Hi,I received a Cease and Desist letter today from the lawyer of PAC-MAN. Do you think they are just trying to scare me, or do they have grounds to say this is copyright infringement? Thanks.
Did they just send you a C&D or did they also object to your trademark filing? They do not have very strong grounds unless you used their logo or other identifying IP. The name "Pack-Men" for a moving company does not infringe upon "Pac-Man" for video games, toys and other categories that they have registered in. They would only be able to prevent you from using this name if they have also registered "Pac-Man" in the same category as yours for a similar service.
Thanks. Here is what they wrote verbatim:Trademark Infringement and Dilution of PAC-MAN®Dear Mr. Smith:We are writing on behalf of our client, NAMCO BANDAI Games Inc. (“NBGI”), a global leader in thedevelopment and production of electronic entertainment-based media.NBGI is the owner of the world famous mark PAC-MAN® and numerous composites thereof inconnection with a wide range of products and services. Since 1980, our client has used the PAC-MAN®mark in virtually every major channel of trade and multi-media avenue, so much so that the mark hasbecome not only famous under law, but has achieved iconic status in U.S. and global culture. Indeed,NBGI has spent tremendous sums of money and resources branding and marketing its goods andservices under the PAC-MAN® mark in order to attain such fame and reputation, and is thus among ourclient’s most important assets.Our client recently discovered that you have filed the following application with the U.S. TrademarkOffice, against which we have filed a formal Letter of Protest with the Office of the Director:Mark PACK-MENGoods andServicesClass 35: Moving and relocation services, namely, planning and implementing moves of homesand officesFiling Basis Intent-to-UseSerial Number 85/657,347Filing Date June 20, 2012Mr. Loren Edwin SmithJuly 31, 2012Page 2We also discovered that you have registered the name Pack-Men Relocation Services, LLC with theSecretary of State of North Carolina, and are in fact conducting business under the ‘Pack-MenRelocation” name.We will be clear, Mr. Smith. Any use of or claim of rights to the PAC-MAN® mark or variant thereof,such as “Pack-Men,” for any product, services or activity constitutes actionable infringement inviolation of federal trademark law, state statutory laws and common law unfair competition laws.Moreover, given the fame of the PAC-MAN® mark, such actions also give rise to claims of trademarkdilution under federal and state anti-dilution laws. Given that you had to be aware of NBGI’s rights,your actions can only be characterized as willful and intentional, thus heightening our client’s rightfulclaims to damages should it decide to pursue this matter in a court of law.On behalf of our client, we demand that you immediately cease and desist from all uses or intended usesof the “Pack-Men” mark and name and/or any composite thereof. To this end, and without limitation,you must permanently remove it from any and all advertising and promotional materials in all forms ofmedia, including print and electronic media, blogs, letterhead, business cards, physical signage, and anyother place or thing in which the mark may appear. This also includes any uses in social media sites oras part of any hashtags or URLs. In addition, our client demands that you immediately expresslywithdraw your U.S. Trademark Application No. 85/657,347 and surrender or otherwise cancel yourcorporate registration with the office of the Secretary of State of North Carolina.NBGI is very serious about protecting its rights and preventing further harmful and unlawful activities.Accordingly, on its behalf, we demand that we receive confirmation that you have ceased all use orintended use of the “Pack-Men” mark and name or composites and variants thereof, or that appropriatesteps toward that end have been taken, together with your promise to refrain from such infringingactions in the future, within fourteen (14) days of the date of this correspondence. If we do not hearback from you within this time frame, we will assume that you are not going to comply NBGI’sdemands and our client will explore all its legal remedies.Nothing in this letter should be construed as a waiver of any rights, claims, or remedies of NAMCOBANDAI Games Inc., all of which are expressly reserved.
Their claim for trademark infringement based on a likelihood of confusion is very weak. They do have an argument for trademark dilution because Pac-Man is a famous mark but you are not using "Pac-Man" but Pack-Men which weakens their claim slightly. Currently, you are doing nothing blatantly wrong. You can either chose to not respond to their letter or respond by stating that you believe that your mark does not infringe on theirs. Their next step would be to file an opposition in your trademark application. Ultimately it is up to the examining attorney to decide, which can often be subjective.
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