2.Product Classes and Trademark Registration

Trademarks are issued to protect consumer associations with a certain type or category of product. It is possible to have the same basic word (or character) trademark issued to two different companies if there are products are so different that no one is likely to confuse them. For example, a toy and game company in the U.S. named “Parker Brothers” may have a trademark for use in toys, games, cards, and children’s products. Another company may have the trademark “Parker Brothers” for an accounting firm. Because the products (and services) are so different, both trademarks may be registered at the same time to different companies.

Some product categories are closer together than toys and accounting firms. In these cases there may be disputes about whether a new trademark may be registered if it comes close to the product or service category of an old trademark that is already registered. There was a dispute of this kind for many years between Apple Records, the record label created by the famous music group The Beatles, and Apple iTunes, the online music store created much later by Apple Computer. Although that particular dispute was eventually settled, if no agreement can be reached a formal trademark opposition or cancellation proceeding might be necessary.

To understand how “close” or “distant” one product or service is from another, you can make use of one of several trademark classification systems. These are numerical codes for different products and services. A trademark registered in one or more classes can be compared to a new trademark that is being registered. If the classes are unrelated - far enough apart - the registration may go forward.

As an example, consider a proposed trademark to be used on autonomous vehicles. The trademark would certify that the software in an autonomous vehicle meets certain standards regarding safety, reliability, and the capacity to communicate with other vehicles and with traffic monitoring systems run by government agencies responsible for streets, roads and highways. The proposed trademark is “AVeLA,” short for “Autonomous Vehicle Law Association” (an actual, real organization); it looks like this:

If you do a trademark search in the U.S. trademark registry, you will find a number of trademarks. Two are simple word (character) marks: (1) “Avela” for nutritional products such as pills made from fruits, vegetable and natural vitamins; and (2) “Avela” for polyurethane foam used in various products, such as padding for cars (e.g., on car dashboards), flotation devices for keeping swimmers floating in water, and other uses.[1]

Neither of these products are similar to the autonomous vehicle safety certification service for which AVeLA wishes to use its trademark. So it is likely that AVeLA can be registered for this use even though the same trademark is already in use by other companies.

Now consider another brand, this time a law firm name and logo. It looks like this:

Because Broad & Bright is a law firm, it would fall into international class 45. This covers, according to the Trademark Law Treaty administered by WIPO: “Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.”

It is common for law firms to expand into other, related fields. So the owner of this trademark might also consider registering it in international Class 36, which covers “Insurance; financial affairs; monetary affairs; real estate affairs”.

Usually registering in fields related to an actual, current field of use must be followed within some time period by actual entry into those fields. Trademark offices do not encourage overly broad registrations in fields that a trademark owner is not actually operating in. The requirements and conditions for registering in multiple international classifications should be discussed with an experienced trademark lawyer in each country where you want to register a trademark.

It can help in your trademark filing to have a diagram representing you company’s current products and markets, and the products and markets you would like to expand into. Something like this may help:

This may also help in monitoring or policing against bad faith registrants in related fields.

Distant product classes are different. You may not be able to claim distant product classes for your trademark. A law firm cannot claim steel manufacturing; a toy company can’t claim accounting services; etc. This diagram represents the classes where you will have to tolerate identical or similar trademarks; oppositions and cancellations will probably not be effective for these:

“Distant”Product Classes