Finding a similar prior trademark does not mean all is lost—the key is the degree of similarity of the marks and the degree of similarity of the goods. For high similarity, renaming outright is advisable; where there is room for differentiation, you can file and fight for it while preparing a review-of-rejection contingency plan; you can also consider negotiating coexistence, taking an assignment of the prior trademark, or filing a non-use cancellation against a prior trademark that has been registered for three years without use.
First Grade the Degree of Similarity
High similarity: the core dominant portion is identical, the marks are homophonic or synonymous, or one fully incorporates the other, and the goods are similar—in this scenario rejection at examination is almost certain and the success rate on review is also low, so forcing the filing is not recommended. Medium similarity: some elements are close but the wholes are distinguishable, leaving room to fight. Low similarity: only individual characters are shared and the overall impressions clearly differ, or the goods are genuinely dissimilar—the approval rate is still acceptable.
Maneuvers Worth Trying
In medium- and low-similarity situations you can file normally and, if rejected, present grounds for differentiation in a review of rejection. Arguments available on review include differences in overall appearance, differences in meaning, dissimilarity of the designated goods, and changes in the status of the cited mark.
Four Ways Around the Obstacle
First, rename—the lowest cost; second, narrow the goods, avoiding the groups similar to those of the cited mark; third, negotiate an assignment or obtain consent to coexistence, eliminating the obstacle directly; fourth, file a non-use cancellation (three consecutive years) against a cited mark that has been registered for three years with no evidence of use, and re-file once the obstacle is cleared.
Two Red Lines Not to Cross
Batch-squatting marks despite knowing of high similarity may be held to be bad-faith registration; making "add-a-character, drop-a-character" micro-adjustments to the mark in an attempt to slip through carries an extremely high rejection rate and wastes official fees. When you are unsure of the degree of similarity, obtain a professional assessment before choosing a path.
If you encounter a similar situation, it is advisable to first consult a record-filed agent on MyTMBee to assess whether a trademark registration assessment is needed before deciding on the next step.