How a Trademark Conflict Can Prevent Registration

I often have discussions with clients about whether or not they will be able to register their mark. Clients can become frustrated when related marks are different but still too close to be registered. Even if the ending of the mark is different, sometimes being completely different words, registration can still be blocked.

Let’s look at a hypothetical: “Cyro Consulting” for the brand name of a business consultancy firm vs. “Cyro Advisors” for the brand name of a business advisory firm. Despite the endings, these brands are too close to be registered in the same class. The primary reason for this is because the words “Consulting” and Advisors” are synonyms for each other and are likely to need to be disclaimed. A disclaimer is a statement made of record in a trademark application to indicate that the applicant does not claim any exclusive rights to the disclaimed portion of the mark, meaning that that particular portion of the mark is not protected. Disclaimers are often descriptive words such as restaurant, company, apparel, and the like.

Other names that would also be too close to these hypothetical marks would be Cyro Specialist, Cyro Experts, and Cyro Co as long as they are in the same class. Same classes indicate that the mark is used to deliver the same or very similar services. At the end of the day, the USPTO is evaluating whether consumers would be confused between the two brands. This raises an important question: if your brand name cannot set you apart from your competitors, what is the point in protecting it?