Someone Registered Your Trademark First! Now What? (Part 1)
So, you decided to do a quick Knock-Out search for your business name while deciding whether to file a trademark application.
You typed the name into the search bar, hit enter, and… turns out, someone already registered it.
Not the results you were hoping for. This means your application will probably be refused for likelihood of confusion if you try to register.
Now, you’re obviously wondering what your options are. The answer depends on the answer to two questions.
Are the Trademark Classes the Same?
If you find that someone has already registered your trademark, the first thing you should do is look at the Goods & services section of the registration and make note of the Class and the actual goods and services in the registration.
All trademarks are registered in at least one International Class (also called Trademark Classes).
An International Class is one of 45 groups that all goods and services are divided into. This categorization system was created by the Nice Agreement (pronounced niece, like the city in France).
This system was implemented in the United States a long time ago, and as a result, the grouping of the goods and services might not make sense.
But make no mistake, they are still incredibly important when deciding whether this prior registration is a problem for you.
How Similar Are the Goods or Services?
Different Classes can be a good sign, but they do not automatically solve the problem. You still have to compare the actual goods and services listed in the registration.
This is because the Class number alone does not decide whether the registered trademark is a problem.
Since the trademarks are already similar, the test is whether the goods and services are so closely related that consumers would be confused about who’s providing them.
To that end, it’s important to understand that no Trademark Class covers every good or service in a particular industry.
Technically, goods and services are separated into different Classes (Classes 1-34 cover goods, and Classes 35-45 cover services).
So, the real question is whether customers might think both businesses are connected, affiliated, or that the goods and services come from the same source.
This matters because businesses often expand into new products and services over time.
A company that sells one type of product may later offer closely related services.
For example, a company that sells vehicles may later offer vehicle maintenance (like a car dealership).
If the customer base for the product and service overlaps, similar trademarks can create confusion about the source.
Because of this, a registered trademark in one Class can prevent the registration of a similar trademark in other Classes.
What Comes Next?
Now that you know how to start figuring out if a similar registered trademark is a problem, here are the three scenarios you will likely find yourself in:
1. The registered trademark’s goods and services are similar or in the same industry as you, and the other business started using the trademark before you.
2. The registered trademark’s goods and services are similar or in the same industry as you, but the other business started using the trademark after you.
3. The registered trademark’s goods and services are very different from your goods and services.
If you’re in scenarios 1 or 2, your options are determined by who started using the trademark first. If you’re in scenario 3, you’re in a different boat altogether.
I’ll explain each scenario in more detail in the coming weeks, so be sure to check back.
Key Takeaways
If someone has already registered your trademark, your application could be rejected for likelihood of confusion.
Your odds of success depend whether the the trademarks being used in the same International Classes.
And if the trademarks used with goods and services that are naturally related.
If the Classes are the same or the goods and services are naturally related, the next important question is who started using the trademark first.