Should I let the trademark go, extend or get a second?

[photoguy]

Need to decide if I should extend my trademark - "companyName - cute slogan" As far as the cute slogan, I accepted the terms: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "cute slogan" APART FROM THE MARK AS SHOWN. Registered in Texas

What I really care about is my companyName Is just the first part "CompanyName" protected alone when I don't use it with the cute slogan above? i.e. could I use it like companyName®?

Would I need to use the registered mark like this companyName® - cute slogan" or could I also use it like this "companyName - cute slogan®"

Also, would it be advisable to just get a new trademark without the cute slogan and if so, should I just let the one with the cute slogan cancel since I have no rights anyway? Besides, I think "companyName® - cute slogan" looks better.

These questions have really been bugging me. I'm a small start-up and just don't want to spend needlessly.

Thanks so much in advance, Adam

 

[SandraMSovin]

Adam,

Your registration needs to match what you actually use, and the notice should match that of the registration. So, if you use the company name alone, you should register it that way. If you use the company name together with the slogan and that is what you have registered, the notice should be referring to the entire mark.

The test for infringement is likelihood of consumer confusion, so if someone were to use your same company name, even though you have it registered with the cute slogan, if the goods/services were similar, you'd probably have a good position, especially because your slogan is descriptive, which indicates your company name is the primary mark element. However, if you only use the company name without the slogan, your registration for the combination could be rendered unenforceable/invalid.

Also, in your described registration, even disclaimed you do have rights with the slogan, they are just limited to combination with the company name. So, if someone were using a similar company name, for example, AND a similar slogan, you'd have a strengthened position.

Look at how you identify the source of your goods/services. If it is only with the company name alone, register that. If it is sometimes together with the slogan, keep the combination registration also. Just be sure that you are actually using the mark(s) as registered and for all of the goods/services that you show on the application.

Lastly, you mention Texas. If you offer goods/services in interstate commerce, you may want to consider a federal registration.

 

[photoguy]

Sandra, I know this is a little late but I wanted to thank you for all your answers to my questions. It really helped. I've decided to abandon my trademark with the cute slogan and just get a new trademark that is just my companyName. Just wish there was a way to just remove the slogan and not pay again. I might later get another trademark that includes the slogan but as a d"DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS", how I use it on my website and cards. Thanks again.

 

[Michael Wechsler]

Good luck to you. Searching plays a very important role in saving on trademark application costs!