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Trademark disclaims all words: can my trademark be these words?

A trademark has all words disclaimed; can I use the disclaimed words in my product name?

A company has a supplemental trademark. All of the words in their trademark name are disclaimed. The trademark is descriptive, but not at first glance. Will I be able to use these disclaimed word for my product name within the same trademark category? The product name uses the term WATER and two other separate words added before these disclaimed words?
So, basically, (without giving any names away) there is the registered supplemental trademark with the full trademark name disclaimed. I would like to use the disclaimed words for my product name and add two words in front and attach the word "water" to the disclaimed name. It would look something like this (x being a variable for a word):

x x water
I've talked to 4 different lawyers (2 from one firm and 2 from another firm) and both firms share opposite opinions. So I am trying to figure out what to do in this case.

~ New York

The lawyers that you talked to have a huge advantage -- they know the facts and I do not.

The situation that you describe is an uncommon (rare) situation. For a trademark lawyer to provide an opinion, it can be helpful to do legal research. This legal research would look for cases that have been similarly decided where the facts are the similar. Some of the facts that would be important to know would be:

  1. How does your trademark compare to the non-disclaimed matter in the prior trademark?
  2. What are the goods and/or services used in connection with the trademark?
  3. Who are the customers?
  4. What are the circumstances surrounding the sale?
  5. What are the channels of trade?
  6. What evidence has been presented in the prior trademarks record?
  7. What other evidence is available about the fame or extent of use of the prior trademark?
  8. What legal actions have been undertaken to enforce the prior trademark?

Each of these questions leads to more questions. Eventually, your trademark attorney can form a clear picture of the other company's use of the prior trademark. Using these facts, your trademark lawyer can find similar cases that can help decide whether or how to use your product name. Clearer facts leads to clearer legal research, which leads to clearer legal opinion. Of course, this investigation and legal research might be expensive, and, even if you do legal research, different attorneys can still come to different opinions and conclusions.

There is a business approach that might help you be cost effective. It is simple really. You just need the answer two questions.

  1. If you start using your product name, how much will it cost you to change to a new product name later?
  2. How much will the trademark legal research and opinion cost?

Here is how it works. If you apply for a trademark, the Trademark Examiner has to decide whether to allow your application. In other words, the Trademark Examiner will have to do at least some legal research and will need to decide wether to allow your trademark application. The Trademark Examiner's decision is not binding upon the the prior trademark owner, but, the Trademark Examiner is an attorney that has a good understanding of trademark law. For complex trademark applications, they generally get discussed with managers, who are more senior and seasoned trademark attorneys.

So, if you want to avoid the cost of legal research (for example, because the cost to change the name is low), you can apply (assuming that you otherwise meet the filing requirements). If you receive a trademark rejection, then you will have the option to do your own legal research to try to persuade the trademark examiner. If the Trademark Examiner approves your trademark, the public (including the prior trademark owner) will have 30 days to object to your trademark application. Keep in mind, however, even a granted trademark that uses your product name does not mean that the prior trademark owner cannot complain or bring legal action at a latter time.

On the other hand, if the cost of changing the product name will be high (for example, compared to the cost of doing legal research), you can seek the opinion of one or more trademark attorneys. If you are depending on the trademark attorney's work, you would be wise to request a written opinion. If different attorneys have different opinions, the written opinions should help you determine who has the more persuasive position.

Good luck with naming your new product.

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