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Trademark confusion

Discussion in 'Copyright, Trademark, Patent Law' started by Brain82, Aug 22, 2020.

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  1. Brain82

    Brain82 Law Topic Starter New Member

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    Jurisdiction:
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    Hello

    I own a fertilizer company since 2014. Let's call it (fantasy name just for this example) "Agroproducts Consulting, LLC". We have around 25 fertilizer products. Each product label has my company name and the company logo in it. The company logo consist in an stylized letter with just the word AGROPRODUCTS with a green leaf above it. Nothing else.

    This year I want to start selling fertilizer products in Amazon. It is a big advantage to sell in amazon when you have your own brand and also a trademarked because that way you can enroll as an Amazon Brand Registry. I don't have any trademark for my brand or logo.

    Before stating to file an application for trademarking my brand, I went to the USPTO website to check in the TESS page if there is any other company using the word AGROPRODUCTS and I found one match of a company, in my state of FL, protecting the logo with the Word Mark "AGROPRODUCTS ROOT ZONE SOLUTIONS".

    The search for AGROPRODUCTS indicate the following info:

    Word Mark: AGROPRODUCTS ROOT ZONE SOLUTIONS.
    Goods and Services IC 001. US 001 005 006 010 026 046. G & S: Fertilizers. FIRST USE: 20160629. FIRST USE IN COMMERCE: 20160629
    Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
    Design Search Code 26.17.13 - Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or letters; Underlined words or letters
    29.01.07 - Inconspicuous designs functioning as punctuation or parts of letters; Small, inconspicuous design elements functioning as punctuation or parts of letters
    Serial Number 87089405
    Filing Date June 30, 2016
    Current Basis 1A
    Original Filing Basis 1A
    Published for Opposition January 24, 2017
    Registration Number 5239722
    Registration Date July 11, 2017
    Owner (REGISTRANT) xxxxxx
    Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ROOT ZONE SOLUTIONS" APART FROM THE MARK AS SHOWN
    Description of Mark The color(s) green, grey, brown and black is/are claimed as a feature of the mark. The mark consists of "Agroproducts" in bold green font outlined in grey with a brown underline mark. The stylized letter "o" in "Agroproducts" has a green leaf above it. "Root Zone Solutions." is black font beneath the brown underline mark. The color white represents background, outlining, shading and/or transparent areas and are not part of the mark.
    Type of Mark TRADEMARK
    Register PRINCIPAL
    Live/Dead Indicator LIVE

    I call USPTO to check if I can protect my logo (MY LOGO is very similar to the one indicated above but it just says AGROPRODUCTS) and they ask me to file the application, pay the fees and wait for the approval. If it not approved I will have to file another application and pay again.

    Here is my question:

    If I want to have a trademark to enroll as an Amazon Brand Registry (and also to protect my brand). What should I do?
     
  2. Tax Counsel

    Tax Counsel Well-Known Member

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    You've been using your company name and logo on the products you've been selling. So you've been using your mark in commerce and that is all that is required to create a trademark. It's just that your mark is not yet registered. Registration of the mark with the U.S. Patent and Trademark Office (USPTO) is not required to create a trademark but it does provide you with several advantages over not registering it. I suggest that you consult an attorney who practices in the area of trademark law for help with ensuring that your mark does not infringe on the rights of anyone else and to help you perfect registration of your mark.

    As for getting in with the Amazon program, contact Amazon to see if it requires that your mark be registered prior to being approved for the program.
     
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  3. welkin

    welkin Active Member

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    Registration is required.

    United States
    • Trademark organization: United States Patent and Trademark Office (USPTO)
    • Statutes: Trademark must have a live registration issued and active in the principal register
    • Text-based marks: 1 - Typeset Word(s)/ Letter(s)/ Number(s); 4 - Standard Character Mark
    • Image-based marks: 3 - An Illustration Drawing which includes Word(s)/Letter(s)/ Number(s); 5 - Words, Letters, or Numbers in a Stylized Form
     
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  4. Brain82

    Brain82 Law Topic Starter New Member

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    Thank you

    It looks like the only solution for trademark my brand is to modify the logo or the company name. The new name can not have the word "AGROPRODUCTS" because there is another company in the same area protecting that specific word.
     
  5. Tax Counsel

    Tax Counsel Well-Known Member

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    You might have a superior claim to the mark if you've been using it in commerce longer than the other company. That's something to discuss with a trademark lawyer.
     
  6. Brain82

    Brain82 Law Topic Starter New Member

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    Could I solve the problem by adding a tradename to my company? For example: My company is registerd under the name is "AGROPRODUCTS", doing business as "4EVERGREEN". Then I trademark the 4evergreen word and use that logo and company name in all labels.
     
  7. army judge

    army judge Super Moderator

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    You need to retain the services of an attorney with knowledge of trademarks, service marks, etc.
     

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