Do u see an issue w/ my TM application?

[futureCGCEO]

I am trying to trademark two words. I'll use the following as an example: Cocoa Puffs, a registered trademark.

Whenever displayed, it always only reads Cocoa Puffs with the small circled R.

The trademark I'd to register is 2 words (just an example: Cocoa Puffs) but on our product and package, the 2 words are followed by one more word that names the product; i.e Cocoa Puffs Cereal

I would like this because if my company comes up with another product say waffles I'd like to display it as Cocoa Puffs Waffles with the circled R following only "Cocoa Puffs"

The USPTO says I would have to trademark all of "Cocoa Puffs Cereal" and file a separate application for "Cocoa Puffs Waffles."

Anyone have any advice? Maybe I could place my two words (again, just an example) as follows: CocoaPuffs, apply for that and try to use Cereal or Waffles right after the combined word?

Thank you, if you guys could refer me to a lawyer that would help for little to no cost I'd really appreciate it. We have no funding but my team, straight out of college too, right now.

 

[Michael Wechsler]

Is there a reason you cannot register the mark in a class for food products? I don't remember which class it is offhand and I am remote.

 

[futureCGCEO]

Well the issue is that (this is just an example), we want to trademark Cocoa Puffs but our product reads Cocoa Puffs Cereal, all across one area.

I've been told by a couple lawyers that I can't trademark 2/3 of the product name.

So I either have to change the application to include all of Cocoa Puffs Cereal or just trademark Cocoa Puffs and move "Cereal" elsewhere or omit it completely from the product.

The products we'll make will all fall under the same class so that shouldn't be an issue. Unfortunately we started producing the product as: Cocoa Puffs TM Cereal

Does anyone know if that TM will be an issue if we try to apply for all of Cocoa Puffs Cereal? I know it really has no legal bearing but the USPTO won't give me a direct answer...

Thanks a million, we are really short on funding and cannot afford an attorney right now.

 

[Michael Wechsler]

I don't know what the words you are using are. That makes a huge difference. If those words are "fanciful" like Coca-Cola, then you've got a problem using those words no matter what context. They are unusual together and very likely to cause confusion as to the origin of goods. The USPTO isn't going to give you a direct answer until you apply. The only person that can give you an opinion properly is an attorney who sees the actual name you are trying to trademark. If a bunch of lawyers told you that 2/3 of the name is a problem (which might be for the same reasons), then what are you hoping we can tell you? Why not just change the name to a new brand?

 

[futureCGCEO]

I had hope because that's all I really had. We started this company fresh out of college based on a product with great initial feedback and well funding is very limited. I wish we could get an attorney.

We're smart though, as young as we are.

We've figured things out. Thanks for your input

 

[preferpatents]

I'm not a lawyer and I don't play one on TV. Please refer to TMEP Section 807.12(d) regarding mutilation. The part that I think may apply to you is:

However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes.

Again, I'm not an attorney. I'm not offering advice. I'm just pointing to an interesting section of the TMEP that is publicly available at the PTO website.