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Trademarks With the Same Name: How and When They Can Coexist

You have got a great product and want to give it a great name. However, you want it to be easy to pronounce, easy to remember and, most importantly, meaningful. You want your name to convey the game-changing, groundbreaking, original sentiment of your brand, but you also want it to be a real word.

Perhaps you have spent some time looking up words in the dictionary that convey your brand’s message and have stumbled across the word “genesis” (noun – generation or creation; the origin or mode of formation of something). Bingo! You love the name and think it will be perfect for your product. Question is, can you trademark it?

With over 900 registered or pending trademarks containing the word “genesis” found in the Unites States Patent and Trademark Office’s database, looks like others before you had the same idea. But can your name coexist? It depends.

Before we deep dive into how and when marks can coexist, let’s start by defining trademarks. A trademark is a word, phrase, symbol, design or combination thereof that identifies and distinguishes the source of the goods/services of one party from those of others. Explore the five categories of word marks below:

As you can see, common words or phrases are well within the scope of trademark protection if they are arbitrary, suggestive or fanciful in nature and not descriptive of the type of product or service provided. Suppose you manufactured microchips. You would be unable to name your product “Microchip” because it is descriptive. On the other hand, suppose you manufactured cookies. Microchip® (trademark owned by JK Gourmet Foods, LLC) would be a great descriptive/suggestive name.

However, trademarking a word to identify one’s goods and services does not prevent someone else from using that word for other purposes. It only prevents someone from using the same word to identify a competing good or service or to prevent consumer confusion between the two. Which means multiple trademarks can, in fact, be filed under one word. Take a look at a few popular examples of coexisting marks:

How was it determined that these marks could coexist? “Likelihood of confusion.” When compared side-by-side, being able to distinguish whether two names are likely to be confused for one another is important to determine the likelihood of confusion. Thinking about the following factors can help reduce likelihood of confusion:

  • 1

    Sound, appearance and cadence of a name

  • 2

    Meanings and

    impressions of a name

  • 3

    Similarities in goods

    and services of a name

According to the United States Patent and Trademark Office (USPTO), just one of these factors is enough to support a finding that the two marks may be similar. Therefore, it’s important to ask a wide scope of questions if you’re thinking about filing for a previously trademarked name: Are they in related areas of commerce? Will they be serving the same subset of consumers? If so, will those consumers believe that the owners of the two trademarks are related in some way?

To help further mitigate confusion, the trademark filing process includes a few more steps:

Step 1: Selecting the specific classes of the product’s goods and services.

When filing a trademark, you will be asked to select specific classes that most appropriately represent the goods and services for which the trademark will be used. Under the Nice Classification System there are 45 different classes, 34 for products and 11 for services. Since a trademark is only protected in the classes under which it is filed, many trademarks will need to be filed in multiple classes depending on how the mark will be used in commerce. Many of these classes, such as International Class 9, include a broad range of products, such as electronics, computer software, computer hardware, microscopes and video cables to name a few. Software for example, can be filed as both a product and a service depending on whether you are selling the software itself (downloaded or packaged) or providing access through your company’s servers.

Step 2: Providing the intended use of the product.

Mint® (Intuit Inc. software for use in electronically managing digital currency payment and exchange transactions, fund transfer, etc.) and Mint® (Breathometer Inc. software for use as a portable breath detection apparatus for detecting halitosis, allergens and pathogens in individuals, etc.) are both registered in Class 9 and both contain software as part of their description of goods. However, the areas of commerce and customer base are so uniquely different that it is very unlikely that these two products will be confused with each other.

Although many registered marks can coexist, when we enter the realm of well-recognized brands and famous trademarks, such as Coca-Cola®, Google® and Cadillac®, a much broader scope of protection exists. Well-recognized brands are often afforded a broader scope due to longevity and potential for confusion if another party were to try and trademark the same or similar name in a different class or area of commerce.

At what point do trademarks receive this broad scope of protection? When a trademark becomes famous because of its distinction, duration, advertising, marketing, licensing agreements and familiarity.

Suppose you manufactured specialty baked goods depicting caricatures of animals with big eyes. You want to call your brand “Googles” or even “Googles Bakery.” More than likely, that would not be allowed because Google® is a famous mark and there could be consumer confusion that Google® is now in the baked goods business.

From likelihood of confusion to famous marks, there’s so much to consider when trying to determine if your desired trademark can coexist with preexisting marks with the same name — and the path to clearance is often filled with roadblocks, but Addison Whitney is here to help you. Our team of trademark experts can help you develop a great brand all while navigating the complexities of the trademark landscape. Who knows, you just might have the next famous mark!

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