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Sometimes, too strong of a legal argument to protect a trademark can come back to be harmful. Trademark owners often have to explain why their marks are not infringing on a prior mark. The situation arises either as part of the registration process or in a court dispute, claiming a mark is infringing. A natural instinct is to present a strong argument as to why your mark is not likely to be confused with a previously filed or used mark. Your argument might be that the marks in question are descriptive, or the field is diluted so that the prior mark is not strong, or the different types of goods and services offered are sufficiently distinct, and thus your mark is entitled to be registered, used or both. Remember that these proceedings are public and the arguments are a public record either in the courts or in the application files at the U.S. Patent and Trademark Office. Your arguments for distinguishing your mark from a mark with prior rights might be used against you later by a different party when you are trying to stop a use you believe is infringing on your rights. Be aware of this conundrum and be careful to make your argument particular to the specific facts of your case to reduce the chance that your own clever arguments cannot be used against you when you want to stop someone from infringing on your mark.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com