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Can Someone Use the Same Trademark for a Different Product?

Law Office of Julie Scott LLC March 9, 2023

Trademark Application with Approved StampAs an entrepreneur or business owner, you understand the importance of trademarking your products or services. You probably know that your trademark must be unique from other trademarks that are already in use. But what if you want to use the same trademark for a different product? Would it qualify as trademark infringement? 

The short answer is: It depends. There are certain factors that should be taken into consideration when determining whether or not you can use the same trademark for a different product without getting into legal trouble. At the Law Office of Julie Scott LLC, I help clients navigate their intellectual property rights and avoid potential trademark infringement claims. From my office in Kansas City, Missouri, I also serve individuals and businesses throughout Springfield, Columbia, and Rolla.  

Can I Use the Same Trademark for a Different Product?  

For entrepreneurs and businesses, trademarks are essential for protecting their products and services. But what if you want to use the trademark that is already used for a different product? Is this possible?  

Using the same trademark for different products may or may not be considered trademark infringement, depending on a few factors.  

How Trademark Classes Apply & Why They Are Important  

The first factor to consider when using the same trademark for different products is the trademark class. The United States Patent & Trademark Office (USPTO) requires all applicants for trademarks to specify the “class” of goods or services to which their mark applies.  

There 45 different classes used by the USPTO to identify and differentiate between similar marks in different industries. So, even if someone else has already registered a particular mark, you still may be able to register it as long as it applies to a different class of goods or services than those previously registered.  

For example, the word GIANT is a registered trademark for a variety of goods and services such as fresh potatoes, artificial sweeteners, disposable tableware, reusable shopping bags, bourbon whiskey, and retail pharmacy services to name a few. These goods and services are in different classes and are unlikely to be confused with each other. 

Differentiating Your Trademark  

The second factor to consider when using the same trademark for different products is differentiation. Even if two marks fall into two separate classes of goods or services, they must still be sufficiently distinct from each other in order to avoid confusion in the marketplace. This means that any similarities between the marks must not confuse consumers as to which mark belongs to which product or service.  

For instance, let's say we have two companies producing products for muscle growth—Company A and Company B—both of whom want to use the word "Gainz" as part of their respective trademarks (e.g., Company A's trademark would be "Protein Gainz" for supplements, while Company B's would be "Fast Gainz" for muscle-building equipment).  

In this case, both marks would likely be approved since they are sufficiently distinct from each other because they contain additional words ("Muscle" and "Fast") that help differentiate them from one another in addition to being applied toward completely different classes of goods.  

How the USPTO Determines Similarities    

Curious how the USPTO examiner determines if an applicant’s mark is similar to one that has already been trademarked? 

The USPTO examiner looks at several factors when determining if two marks are similar:  

  • The type of mark. For example, a word mark will be compared differently than a logo or design mark. Generally speaking, a word mark needs to be identical or very close in spelling and sound to be considered similar. Marks that have visual similarities, such as logos or designs, may also be considered similar even if they do not have any shared words or sounds.  

  • The goods or services associated with the mark. In addition to the type of mark being submitted, the USPTO also looks at the goods or services associated with each. If two trademarks are associated with very different goods or services, then it is less likely that they will be considered similar by the USPTO examiner. On the other hand, if two trademarks are associated with similar goods or services then there is a greater likelihood that they will be determined to be too similar for both to co-exist in the marketplace.  

  • The likelihood of confusion. Finally, the USPTO considers how likely it is that a consumer would confuse two marks when presented together in an advertisement or on product packaging. If there is a strong similarity between two marks and confusion could arise from this similarity then it is likely that one of them will not receive approval from the USPTO. 

Trademarks must meet certain criteria in order to receive approval from the USPTO. If you are considering using a trademark already used for a different product or service, contact a trademark attorney to discuss your case and ensure that you avoid trademark infringement claims.  

Personalized & Purposeful Legal Counsel  

By understanding the above-mentioned factors, you can ensure that your trademarks will stand out and protect your business from trademark infringement claims. However, each case is unique, which is why you might want to get personalized and purposeful legal counsel from a knowledgeable trademark attorney. Reach out to me at the Law Office of Julie Scott LLC to request a free consultation with me and discuss your particular case.