Trademark issue for "SHADOW BOATS".

Question

I have been using the name "SHADOW BOATS" since 1987 for a Bassboat that I designed and built. I am aware of another company using a similar name for larger boats, such as yachts, but they previously indicated it was fine for me to use "SHADOW BOATS" for my fishing boats. You can see where I used the name at www.shadow22magnum.com. I recently filed for the trademark, but the USPTO indicated it was too close to an existing trademark for "Shadow." How can I proceed to secure the trademark for "SHADOW BOATS," and what options do I have in resolving this issue?

Alan Harrison · Answer

There are various ways to work around a "likelihood of confusion" refusal by the USPTO. The most common is to try getting a concurrent use agreement with the owner of the "confusing" registered mark. This is something that any trademark attorney could assist you.

James L. Arrasmith · Answer

Since you’ve been using "SHADOW BOATS" since 1987, you have what’s called common law rights in your geographic area, even without a registered trademark. However, the USPTO’s concern about similarity to an existing "Shadow" trademark means you might face obstacles registering the full mark federally. One option is to respond to the USPTO’s refusal by arguing that your use is distinct because you target a different market segment—fishing boats versus yachts—and that there’s no likelihood of confusion. 
 
You could also consider narrowing the scope of your trademark application to focus specifically on the goods you offer or add a design element to the trademark to make it more unique. If you have proof of long-term use and customer recognition, submitting that evidence might strengthen your position. Alternatively, you might negotiate a coexistence agreement with the other trademark owner to clarify rights and avoid conflicts. 
 
If you feel stuck, reaching out to a trademark attorney for advice or to help draft your response can be valuable, but you can also try to resolve it yourself by carefully reviewing the USPTO’s refusal letter and following their instructions for contesting it. Keep in mind that federal registration offers broader protection, so addressing this issue thoughtfully is important for your brand’s future.

Q: Trademark issue for "SHADOW BOATS".