Advising on U.S. trademark registrability and infringement risk for a restaurant business entering the United States

For a company pursuing a restaurant business in the United States, we advised on whether a new brand could be registered as a U.S. trademark and on the risk of infringing existing trademark rights.

The main issue was whether, when a proposed mark is spelled differently from an existing registered mark but sounds similar, registration could be refused under U.S. trademark law on the ground of a likelihood of consumer confusion.

We also reviewed conflicts with prior marks in identical or similar industries, the distinctiveness of descriptive terms, and the risk of trademark infringement arising from actual use of the brand.

We analyzed U.S. trademark law (the Lanham Act), USPTO examination standards and relevant case law, searched prior registered marks and pending applications, and reviewed similarity in sound, appearance, meaning and designated services.

We also assessed registrability separately from the infringement risk arising from actual use, and proposed alternative strategies to improve the chances of registration, such as combining the name with a new, distinctive term.

We advised that, because of phonetic similarity to a prior mark and the likelihood of confusion in a related industry, there was a high risk that registration of the existing name would be refused.

We also analyzed the risk of trademark disputes that could arise in actual business operations and provided a trademark filing strategy to strengthen the distinctiveness of the new brand.

Related U.S. practices: Contracts & Business Transactions, Corporate & Business Advisory