Likelihood of confusion across different classes

Trademark Refusal Based on Likelihood of Confusion with a Different Class?

A refusal of your trademark application based on a likelihood of confusion may occur with a similar mark in a different class. How is this possible? Doesn’t a similar mark in a different class mean that the marks are separated in the marketplace? Not necessarily.

In my 10 years of trademark practice, I have encountered some combinations of classes that seem to intersect and draw a likelihood of confusion objection when the marks are similar. A common one is when the names of a product (class 1 – 34) and a retailer (class 35) are similar, where the retailer might sell the product or something like it. This is especially problematic where the retailer is online, and has a large catalog of items it may not stock,  since the list of items is larger than usual, and may encompass a number of different industries or marketplaces (multiple classes). Also, many retailers manufacture goods under their own name, known as white-labelling. The problem may also arise in a product listing aggregator, such as Google Shopping (previously Froogle), or used item sites like Craigslist.org and Locanto.com.

Another example that comes up frequently is a service that has a similar name to a marketing company in the industry of the service. For example, a law firm that has a similar name to a legal marketing company like Legalzoom.

If you are a trademark attorney reading this blog, please add any combinations that you think occur frequently and create roadblocks for trademark applications, into the comments below, and I’ll update it here. Let’s create a definitive list!

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