Section 16-36-15 - Registration of trademarks, service marks, prints, and labels; corporation names, partnership names, limited liability company names, and trade names(a) A proposed name or mark that is substantially identical to a registered name or mark shall be rejected and not accepted for registration. A name or mark is "substantially identical" if: (1) The only variation from an existing name or mark is the spelling of a number instead of the numerical symbol for the number. For example, "Twenty-Seven, Inc.", "27, Inc.", and "XXVII, Inc.";(2) The names or marks are pronounced the same and the only variation is that a word (or words) is spelled differently. For example, "The Flour Shop, Inc." or "The Flower Shop, Inc."; "Waimanalo Suns, Inc." or "Waimanalo Sons, Inc."; or "Beach Days, Inc." or "Beach Daze, Inc.";(3) The only variation from an existing name or mark is the business entity suffix, affix, prefix, or the use of the word "partner" (except in the case of a subsidiary relationship, or where the entities are affiliated and the entity that registered the existing name or mark consents to the use of its name or mark). For example, "Sampson, Inc.", "Sampson Corporation", "Sampson, Incorporated", "Sampson Company", "Sampson Limited Liability Company", "Sampson Partnership", "Sampson Partners", "Sampson Limited Partnership", and "Sampson Limited Liability Partnership";(4) The only variation from an existing name or mark is the use of "n", "-n-", or the use of the letter "n" between two or more words rather than two or more letters to connote "and", or the use of the letter "a" or the words "an", "and", "the", "of, "in", "at", "on", "to" or "for" or the Hawaiian language equivalent words of "da", "ka", "ke", "na", or "la". For example, "Oceanside Pier Honolulu, Inc.", "The Oceanside Pier of Honolulu, Inc.", and "An Oceanside Pier for Honolulu, Inc."; "Ka Hana Maiau, Inc." and "Hana Maiau, Inc."; or "Peaches and Cream, Inc.", "Peaches 'N Cream, Inc.", "Peaches-N-Cream, Inc.", and "Peaches 'N Cream, Inc.";(5) The only variation from an existing name or mark is the use of punctuation, spaces, or symbols. For example, "ABC, Inc." "A.B.C., Inc.", "A B C, Inc.", "AB&C, Inc.", and "A*B*C, Inc.";(6) The only variation from an existing name or mark is the double use of a business entity suffix or affix. For example, "Acme Construction, Inc." and "Acme Construction Company, Inc.";(7) The only variation from an existing name or mark is the use of a plural word or addition of a possessive "s". For example, "Acme Contractors, Inc.", "Acme's Contractor, Inc." and "Acmes Contractor, Inc.";(8) The only difference from an existing name or mark is a universally recognized abbreviation or shortened form of a word. For example, "Southeast Landscaping, Inc.", "S.E. Landscaping, Inc.", "SE Landscaping, Inc." and "S E Landscaping, Inc.";(9) The only variation from an existing name or mark is the use of the phrase "of Hawaii", or the word "Hawaii", or its recognized abbreviation "HI" at the end of the name, unless used by a subsidiary or associate entity, or unless the entity that registered the existing name or mark consents to the registration of the name or mark. For example, "Omni, Inc.", "Omni of Hawaii, Inc.", "Omni of HI, Inc.", "Omni Hawaii, Inc." and "Omni HI, Inc.";(10) The only variation from an existing name or mark is the use of the word "Hawaii" or "Hawaiian" at the beginning of the name. For example, "Hawaii Flower Bouquet, Inc." and "Hawaiian Flower Bouquet, Inc."; and(11) The only variation from an existing name or mark is the use of a number, or alphabetical or numerical symbol, in consecutive order indicating a close association with the name or mark currently on file. For example, "Acme Development I, Inc." and "Acme Development II, Inc."; or "Acme Development A, Inc.", and "Acme Development B, Inc.".
(b) A name or mark is not "substantially identical" if (1) A comparison of the name or mark reveals a difference from the names on file with the division, unless the name is likely to be confused upon oral communication. For example, "Ice Cream Shop, Inc." and "Ice Cream Sweet Shop, Inc.";(2) The name or mark contains a letter or letters, other than the plural or possessive "s", to distinguish it from names currently on file with the division. For example, "Star Decorating, Inc." and "Start Decorating, Inc.";(3) The name or mark contains the addition of a suffix, prefix, or affix to a word or words contained therein to make it different from names currently on file with the division. For example, "Finance Specialists, Inc.", "Financing Specialists, Inc.", "Financial Specialists, Inc." and "Financial Specialties, Inc.";(4) The name or mark contains a variation in the sequencing or arrangement of the same words as contained in names currently on file with the division. For example, "Systems Analysis and Research Consultants, Inc." and "Systems Research and Analysis Consultants, Inc."(c) In making determinations as to whether names or marks submitted for registration are substantially identical to registered names or marks, the following factors shall be considered:(1) Purely geographic names, or landmarks registered with a recognized historical registry, shall not be registered even with the inclusion of a business entity suffix, affix or prefix. For example, "Honolulu", "Olomana", "Wailuku, Maui", "Kailua, Oahu", "Diamond Head", "Aloha Tower", "Pearl Harbor", "North Kohala", "King Street", "Beretania Street", "San Francisco", "Paris", "Belgium", and "Hawaii Foreign Trade Zone";(2) Coined words may be restricted to one registrant unless consent is granted by the registrant. For example, "AMFAC" or "JALPAK"; and(3) Deceptive words, symbols, or phrases shall not be registered.(d) Some filings are prohibited under federal or state law. The following are examples of some of these prohibitions: (1) The terms "financial institution", "bank", "banker", "banking", "banc", "savings bank", "savings and loan", "savings association", "financial services loan company", "credit union", "trust company", "intrapacific bank", "international banking corporation", or "trust" shall not be used unless authorized to engage in business as a financial institution in this State or is otherwise approved by the commissioner of financial institutions pursuant to chapter 412, HRS. No financial institution may use words designating another type of financial institution, or words of similar import, or translations of such words, in a manner that suggests or might tend to lead others into believing that it is that type of financial institution;(2) Pursuant to 36 U.S.C. §380, as amended, the words "Olympic", "Olympiad", "Citius Altius Fortius", or the Olympic ring symbol shall not be used without the approval of the United States Olympic Committee except for organizations using said name prior to September 21, 1950;(3) Federally registered names listed in Title 36 of the U.S. Code (patriotic societies and observances) shall not be available for use;(4) The words "Postal Service" or "Post Office" shall not be used;(5) Pursuant to section 431:4-104(d)(1), HRS, as amended, domestic insurance corporations shall utilize the word "insurance" in the name and, as the last word thereof, one of the words "corporation", "incorporated", "limited", or one of the abbreviations "corp.", "inc.", or "ltd."; and in the case of the reciprocal insurer, the name shall include the word "reciprocal", "interinsurer", "interinsurance", "exchange", "underwriters", or "underwriting";(6) Pursuant to section 466-10, HRS, as amended, the words "certified public accountant", "public accountant" or the abbreviations "CPA" or "PA" shall not be used unless the applicant is licensed in accordance with chapter 466, HRS;(7) The use of the word "cooperative" shall be restricted to cooperative associations pursuant to chapters 421 and 421C, HRS, as amended, and to cooperative corporations pursuant to chapters 421H and 421I, HRS, as amended; and(8) Pursuant to section 449-5, HRS, as amended, the words "escrow", "escrow depository" or any other word or phrase having the same or similar meaning shall not be used unless the applicant is licensed in accordance with chapter 449, HRS.(e) In addition to the above, a proposed name or mark shall:(1) Not be prohibited by law;(2) Be filed in good faith with the intent of conducting a legitimate business and not to defraud, confuse, or mislead the public; and(3) Not state or imply that it is connected with a governmental agency, unless otherwise permitted by a governmental agency or law.(f) If a name or mark is rejected, the division shall notify an applicant of the basis for the rejection.[Eff 5/10/69; am 9/4/79; am and ren § 16-36-15, 7/30/81; am and comp 12/21/84; comp 2/6/88; am and comp 3/28/00; comp 11/22/02; comp 3/29/04] (Auth: HRS § 26-9) (Imp: HRS §§ 414-51, 414D-63, 425-6, 425-164, 425D-102, 428-105, 482-3, 482-4)