Thursday, October 15, 2015

Today's Tip For Saving Your Trademark Filing Fee - Don't File Trademark for BURGER QUEEN

In questionable move, an individual in Puerto Rico filed a federal trademark application on October 9th for BURGER QUEEN as it relates to "[b]eef patties; [f]rench fried potatoes; [f]ried meat; [and] [b]urgers contained in bread rolls[.]" The applicant filed the application on an intent-to-use basis.
Does BURGER QUEEN remind you of another entity selling burgers and fries? If so, this trademark application is in serious trouble. 

Trademark laws are designed to prevent customer confusion regarding the source of a product and to prevent junior users from riding off the goodwill of more established senior users. To that end, Section 2(d) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering any mark that is confusingly similar to a previously filed mark. Although several factors are considered when determining whether two marks are confusingly similar, the analysis generally boils down to (1) the similarity between the marks and (2) the relatedness of the goods and services.

In this case, BURGER QUEEN is very, very similar to BURGER KING and the goods are exactly the same. Also, by last count there are approximately 88 previously filed trademark applications containing BURGER KING owned by the Burger King corporation. When the BURGER QUEEN trademark application is assigned to an Examining Attorney in approximately three months, that attorney will almost certainly issue an Office Action refusing to register this mark due to the many previously filed BURGER KING applications.

Surprisingly, the applicant used an attorney to file this application. Because trademark filing fees are nonrefundable (and due to infringement issues), an attorney should always conduct a clearance search before filing an application to account for issues like the above. Whether a search was done in this case is unclear, but it is clear that the applicant's $450 filing fee (and whatever fee it paid its attorney) has been wasted.

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