QUESTION: I have a question on compound word trademark registrations. Without disclosing the actual name, we have a trademark application that has passed through opposition. we have submitted the specimen and are awaiting a registration. Two months ago a new application (has not been issued an examiner) was submitted with a similar name, in the same category, 03. our name is: GoodSkinActives competitor application is: Good Actives. What are the chances that the examiner will see a conflict with our mark which hopefully will be registered by the time an examiner is issued to our competitor?
ANSWER: Typically, when the latecomer to the same market removes one word of a multi-word trademark by an earlier user, the earlier user of the multi-word trademark has prior rights. Therefore, if the earlier user has filed a trademark application, and the examiner finds it, the latecomer’s application will likely be rejected.