Jun
03

Trademark Registration Pitfalls: Not Understanding that Certain International Classifications of Goods/Services Are Considered Closely Related by the USPTO for Section 2(d) Rejection Purposes

A company wanting to protect its brand identity and thereby enhance its valuation generally seeks federal registration of its trademark/service marks which may include names, logos, and slogans.   In applying for a mark that is “close” to an already registered mark, applicants sometimes make the mistake that the examining attorney will not find a likelihood of confusion if the applicant’s mark involves a different international classification (IC) of goods/services from the registered mark’s specified IC(s).

This assumption is incorrect.   Sometimes applied-for marks that are deemed by the USPTO’s examining attorney to convey a similar commercial impression with an existing registered mark will be denied registration even if the two marks do not involve the same international classifications of goods/services.   One of the determining factors is whether the specified international classes involve closely related goods/services.  Thus a registered mark for IC class 030 (e.g., pizza as a food product) and an applied-for mark for IC 035 (restaurant services) may be found to involve related goods and services that could result in a likelihood of confusion as to the provider of the pizza food product/restaurant services.

Similarly, IC 025 for clothing is a class that the USPTO routinely finds overlaps with other IC classes, particularly jewelry (IC 014), purses (IC 018), and eyewear (IC 09). The “clothing” applicant will generally not prevail if the examining attorney can provide evidence that a single entity is likely to offer for sale both clothing and complementary items such as jewelry, purses, and eyewear.  For example, in In re Manja Studio SDN BHD (May 17, 2019), the Trademark Trial and Appeal Board (TTAB) affirmed the rejection of the applicant’s mark for clothing, finding that the applied-for mark was likely to cause confusion with an existing similar registered mark for watches.    The rejection was affirmed even though that applicant’s mark was for relatively inexpensive “T-shirts, outerwear, and hats” while the registrant’s mark was for “luxury designer watches.”

Take Home Points:

The trademark registration is not as simple as it seems.  Many factors can enter into the calculus.  An experienced trademark attorney can help identify pitfalls upfront.  Sure, an applicant can appeal a rejection to the TTAB but statistics show that the TTAB affirms about ninety percent (90 %) of likelihood of confusion rejections.  Besides, appeals are expensive.  Why spend money on the process if there is a solid chance of rejection?

If you are considering filing a trademark application with the USPTO or have encountered trademark registration problems, contact the commentator to discuss your trademark registration questions and learn about our reasonable legal fees for prosecuting trademark registrations on behalf of clients both in the U.S. and abroad. Clients’ applications are handled at all stages by an attorney and all clients are advised upfront of potential registration issues.

 

WE HOPE YOU FIND THE ARTICLE INSTRUCTIVE. HOWEVER, THE INFORMATION PRESENTED IS NOT LEGAL ADVICE AND IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY.

 

© Troy & Schwartz, LLC 2019

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