Q: Question on International Classes as listed in the USPTO can there be more than one per class?
My company prints clothing & we want to print shirts with a certain word on it. This word is a verb & describes the action of the specific activity, a pretty common one.
We discovered a company owns the trademark for the word. Its not their primary brand but they have a product with this word in the name.
My question is this: In regards to their trademark, they have one of their classes listed as 25 - shoes. Would we be able to trademark class 25 for shirts and hoodies? Or because its apparel, regardless of type its not allowed. Does the goods and services not really mean anything?
While its in the same field (again they trademarked the action or doing) there could be "brand" confusion. While its not their actual brand, they have a product with that word in the name. Our clothing doesn't referencing them but the action. I think people are largely unaware of them & wouldn't be actual confusion but I'm not sure the courts care if their COULD be confusion.
It is possible, but not likely. Shoes could be viewed as being too similar to shirts and hoodies because they are all apparel.
That said, trademark confusion analysis is highly fact-intensive and depends on a number of factors. You should consult a trademark attorney before you take any course of action.
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A: Using a trademark which is identical or very similar to another trademark being used to represent a brand or product(s) in a similar or related class of goods or services could lead to a claim of infringement and/or refusal of trademark registration due to likelihood of confusion. Consult with a trademark attorney for information specific to your proposed mark.
I agree with my colleagues Mr. Billick and Ms. Suero. I would only add - because you state that you "want to print shirts with a certain word on it" - that if the "word" is "common," is being used in a decorative or ornamental sense and not in a trademark sense, then there shouldn't be an issue with someone else's mark. Furthermore, you mention twice that the other party uses the "word in the name," which seems to suggest that the word is just a part of a larger mark, which would go into the confusion analysis.
On the other hand, If you're trying to register the word as a mark yourself but your specimen only uses the word as a decoration, it might be rejected as being merely ornamental (not functioning as a mark). A quick test (though not foolproof) to see whether a word is functioning as a trademark or just as a decoration is whether the word takes up a large area of the article. For instance, if the word runs across the entire chest area of a t-shirt, that would likely be considered decorative/ornamental use and not functioning as a trademark, versus a relatively small presentation like an Izod alligator on a shirt pocket area or hangtag, which would likely be considered trademark use.
A trademark attorney can sort through the facts and analysis with you.
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