can your trademark include another's trademark?

Posted in the Patent / Trademark Law Forum

business owner

Parsippany, NJ

#1 Jun 25, 2009
The trademark I requested includes another registered trademark that is not mine. Most analagous to my situation would be a "how to" book...

So say there is a trademark "Widget" and then I try to register "Widget Bootcamp". The "Widget" trademark is VERY generic and there is no way in my field to talk about it without using that trademark.

What are my chances of my trademark application being approved?
Erica1NT

Willow Grove, PA

#2 Jul 6, 2009
It's tough to say without knowing what the brand name is. If it really is as "generic" as you say it is, then it really should not have been granted registration in the first place. Or perhaps it has become generic overtime time through improper use and inadequate policing by the trademark owner, in which case it could be vulnerable to losing its registered status. However, if it is a valid existing trademark, it is hard to imagine that the USPTO would grant registration to another mark that incorporates a registered brand name. For example, let's say you were trying to register Band-Aid Bootcamp. I think you would have a very difficult time doing so.
business owner

Parsippany, NJ

#3 Jul 8, 2009
The existing trademark that I want to use involve standardized tests: SAT, MCAT, LSAT. It would be almost impossible to make a product for the SAT or MCAT and not use that trademarked abbreviation.
Erica1NT

Willow Grove, PA

#4 Jul 20, 2009
It is highly unlikely you will succeed in being granted a trademark registration for SAT Bootcamp (or any other brand name that includes SAT that would be used for preparing students for the SAT exam). College Entrance Examination Board owns the trademark "SAT" in connection with college entrance exams and related services, such as prep courses. Others have tried unsuccessfully to trademark brand names for their own SAT prep courses that include the registered name SAT.(See, for example, Serial Number 77256901, in which an application was made for EPREP FOR THE SAT, and was rejected based on likelihood of confusion with the College Entrance Examination Board's registered trademark.) The same will be true for LSAT and MCAT, both of which are registered trademarks.

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