Patent Attorney and Founder
Question: I had my attorney working on a trademark application, and they said the name I chose is too close to two other existing marks. The name I want to use is “Kornish,” but there are existing trademarks in the same baby category for “Nourish Newborn” and “Nurse and Nourish.” What should I do?
Answer: That’s a good question and a nuanced legal issue. You’re trying to register “Kornish” with a silent ‘K.’ The USPTO will likely consider this trademark similar in sight, sound, and meaning to the existing marks, especially “Nourish.” Assuming those other registrations are in force, you’ll probably receive an office action for likelihood of confusion with the existing “Nourish” mark.
However, it’s always best to consult a trademark attorney who might see something you don’t. When we encounter potential conflicts for our clients, we conduct thorough research. We look at the file history, ownership, and common law usage of the trademark. We also check the status of the LLC that owns the trademark to see if it’s still active. If the LLC is dead, the trademark might be too.
Additionally, you should check when the trademark is up for renewal. It might be close to abandonment if the owner doesn’t renew it soon. In that case, you could file your trademark application, anticipating the existing mark might be abandoned within a few months.