Is It a Problem If I Found My Trademark Registered for Different Goods or Services?

So, after many painstaking hours of research and brainstorming you came up with a great name or design for your company or product. But then to your dismay you learn that another company is already using that name or design and has a trademark on it. Does it mean that you have to go back to the drawing board and start the process all over again? Maybe, but not necessarily.

The United States Patent and Trademark Office (“USPTO”) registers trademarks based upon a system of classes for good and services. There are thirty-four (34) classes for products and eleven (11) classes for services. Consequently, it is possible for a name or design to be used in two different product categories.  For example, the name “Delta” is trademarked for Delta faucets and there is a separate trademark for Delta Airlines.  How can this be?

What is the Likelihood Confusion?

The most common reason for the USPTO to refuse registration of a trademark is likelihood of confusion. The general guideline for determining whether a trademark (aka mark) is likely to confuse a reasonable consumer, is that similar marks are usually not in conflict if they are in different classes for products and services. However, if the similar marks for similar products are sold in the same marketing channels, then they may cause confusion even though they belong to different classes. So back to the example of Delta, one is used for faucets and the other is used for airplanes which are different classes so there is no likelihood of confusion. However, if at the same department store, they sold Delta faucets and a different company’s new line of Delta hand tools, that would cause a likelihood of confusion. A reasonably careful consumer might buy the Delta faucets and Delta hand tools thinking that the products came from the same company.

How to Determine Whether a Mark May Conflict?

It is easy to tell if a mark is similar when the names are the same. But there are other factors to looks at that can make marks confusingly similar. Features such as sound, look, similar meaning, commercial impression, similar meaning in different languages, or being the pictorial equivalent of a word. 

• Sound – Trademarks can be confusingly similar if they sound similar but are spelled differently. Examples:

• XCEED & X-SEED

• T. Markey & Tee Marqee

• Entelec & Intelect

• Apple iPhone & PineApple Mobile phone

• Look – Trademarks can be confusingly similar in appearance if one uses standard characters and the other uses stylized font of the same characters. If your trademark uses standard characters then the word itself is protected.   

• Commercial impression – A trademark can be confusingly similar if they visually convey the same idea or impression. For example, if your design has a picture of a man standing under a palm tree looking at a sunset with a sailboat and the other design is almost identical but they replaced the sailboat with a fishing boat, then they could be considered confusingly similar. The reason is the designs have the same dominant design element.

Even if you can argue that two trademarks are confusingly similar based upon the factors above, you must still address whether the goods or services associated with each trademark are related. Remember the same trademark “Delta” can be used if the good and services are unrelated and not sold in the same marketing channels. What are examples of good as services that would be considered related:

• You are attempting to get a trademark connected to t-shirs and pants. However, someone is already using a confusingly similar trademark connected to hats.

• You are attempting to get a trademark connected to banking services.  However, someone is already using a confusingly similar trademark connected to mortgage lending services.

• You are attempting to get a trademark connected to t-shirts and pants. However, someone is already using a confusingly similar trademark connected to online retail store services featuring clothing.

How Do You Determine if Good or Services are Related?

Ultimately this is a determination by the USPTO attorney. If the goods or services are identical, similar, or competitive then it is pretty clear that they are related. If the items are used together or advertised together that is also a strong indicator that the good or services are related. If both good or services are sold or provided by the same manufacturer or dealer that may also be an indication that they are related, but that is not always the case. 

Final Thoughts

Always try to perform a comprehensive clearance search for similar trademarks. If you happen to develop a trademark that is likely to confuse a reasonable consumer, hopefully your trademark is in a different class of goods and services then the other trademark. But if your mark is similar to another mark, there is an argument that it could cause confusion, and the marks are potentially related, then you may be left with few options. You could consider contacting the other trademark owner and discuss your concerns. There is always the potential that you could work out an arraignment that would be mutually beneficial.  If that is not possible, then you can always consult with a trademark attorney to explore other options or argue on your behalf that the good or services are not related.

In our next blog we will discuss the whether you should apply for a state or federal trademark registration. 

If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.