Alec Allen Ross

Alec Allen Ross is a passionate intellectual property attorney who has helped thousands of trademark clients. After years of working as a trademark attorney and as a managing attorney at the largest trademark law firm in the United States, he founded The Trademark Place in order to provide clients with a better experience.

Prior to becoming an attorney, Alec was a Peace Corps volunteer serving in Mali, West Africa as an education agent. He was also a graphic designer, marketing specialist, and writer.

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Florida

The Florida Bar

ID Number: 1019107

Since 2019

Iowa

Supreme Court of Iowa

ID Number: AT0013466

Since 2017

Founder | Trademark Attorney

The Trademark Place

Current

We work to simplify the trademark process for our clients. At The Trademark Place, we provide flat fee pricing for our clients, so that they know what to expect and they do not have to worry about surprise fees. We make ourselves available for our clients to ensure that they receive world-class service.

University of Iowa College of Law

J.D.

Honors: Boyd Service Award with Highest Honors

The Florida Bar  # 1019107

Member

2019 - Current

The Iowa Bar  # AT0013466

Member

2017 - Current

Q. Is it okay to register a trademark for "Montéclair" for Class 25.

May 17, 2023

A: Without running a comprehensive search, it is difficult to say for certain. With that said, there are definitely at least some similarities between Montéclair and Moncler. They both begin with MON and end with a similar sound CLAIR vs CLER.

When reviewing new trademark applications, the USPTO uses what is referred to as an overall commercial impression. That means that they are not necessarily looking at just exact matches. Some of the things they tend to look for are how the trademarks sound, how they look, what meanings the marks might have (including translations), and what other similar looking/sounding/etc. trademarks are already registered for similar goods.

Your best bet is to have a proper comprehensive clearance search run. I would recommend hiring a trademark attorney to help you with this as there can be nuances to any particular trademark search. ... Read More

Q. Cease and Desist letter about trademark rights violation

May 17, 2023

A: Trademark protection often extends beyond exact trademark matches. For example, when the United States Patent and Trademark Office (USPTO) reviews trademark applications for a likelihood of confusion, what they generally look for is what is referred to as an overall commercial impression. This could be a particular word that is the same between the different trademarks or it could even be a similar meaning or similar sound. This is because consumers rarely fully remember a whole trademark. They tend to remember the most relevant part.

For example, if someone tried to trademark MIKE for sports apparel, that would almost certainly be refused due to NIKE. NIKE would also be well within their rights to enforce their own trademark rights (by sending their own cease and desist or even simply bring a legal action).

A real world example from a couple of years ago was when a small software company tried to trademark a pear as a logo. Apple sued them claiming the logo could cause people to be confused. The pear did not really look like Apple's classic logo. It was a pear, not an apple, and it did not have that "bite" out of the side of it. But in any case, it was a roundish fruit being used for a technology company (in this case, an app developer for a cooking recipe app).

With trademarks, it is important for trademark owners to protect their brands. Sometimes, this means enforcing their rights against similar (and sometimes less similar) trademarks. If a trademark owner does not enforce their trademark rights against others, they risk losing their protection.

You also mentioned that the other party has "incontestability." Incontestability can be filed for and granted after a trademark has been registered for at least five years. It grants the rights-holder additional trademark rights based on the length of time they have already had their registered trademark.

As to what options you may have. Without knowing more, it could be possible for you to negotiate with this other company and come up with a co-existence agreement. There is no guarantee that could work, but if you attempt this, I would recommend that you hire a trademark attorney to assist you with it. Some companies are more flexible than other companies and are sometimes willing to work with you to find a solution that does not harm their trademark rights while still allowing your trademark to exist.

Another option would be to consider rebranding. If you do decide to rebrand, I would, again, recommend that you hire a trademark attorney to run a comprehensive search to minimize the risk of a conflict, and then attempt to register the new trademark name. ... Read More