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Law Educator, Esq.
Law Educator, Esq., Attorney
Category: Business Law
Satisfied Customers: 116780
Experience:  All corporate law, including non-profits and charitable fraternal organizations.
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I just got rejected from the USPTO twice trademark. There is

Customer Question

I just got rejected from the USPTO twice for my trademark. There is another business in the same industry (but a very different customer segment) that has a very similar name, but still different. I guess it wasn't different enough. What are my options? Here are some as I see it:1. Choose a different name and awkwardly inform all of my customers and change all my public media accounts, etc.
2. Pay a law firm to do a final rebuttal to see if I can get it. Most likely won't be able to receive approval after two failed arguments.
3. Approach the other company to see if we can work out an agreement. I will never go after his customer and he can do what he wants? He has the upper hand in this situation so I don't know how I would justify him not coming after mine (which he doesn't at the moment).Is option #3 a viable contract that I can have a lawyer draft up that can protect me if they decide they want to sue me later?I am in NJ and the other in CAAny help would be appreciated!
Submitted: 1 year ago.
Category: Business Law
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
Unfortunately, even if you have a different customer segment, the first to file the mark is the legal owner to exclusion of all others. In order for it to be approve it has to not create a likelihood of confusion with the other business AND it cannot be a derivative use or play on the name of the original mark.
If you are close enough to the registered mark, filing an appeal to the USPTO is usually fruitless and can cost in the $10,000-$20,000 or more range.
Changing your name is ***** ***** but it depends on how much money you would have to pay to change it on your business accounts and media avenues where you have already put your name out there.
Negotiating with the current owner of the name to have permission to use the name only for your specific segment of clientele would be a potential, but most trademark owners who are actively using the name will not agree to allow you to use it no matter what you offer.
Overall, legally and economically from what you said, changing your name would likely be the best option.

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