Someone Registered Your Trademark First! Now What? (Part 4: Different Industries)

So, you did a Knock-Out Search and found a trademark that’s similar to yours.

Last time, I told you to check two things. First, if the Goods & services section of the registration listed the same International Class that your products or services are in.

Second, if the products or services in that section are in the same industry as your goods or services.

If the registration lists different goods or services, or a totally different industry, this article likely addresses your situation better than Parts 2 or 3.

Trademarks Are Not Absolute Ownership

Good news: this is usually the best scenario to be in. While it’s true that someone already has a trademark, that registration is less likely to be a problem for you.

This is because trademark law does not give the owner control over the word in all contexts.

It only gives the owner control of the trademark in connection with the products and services on the registration.

This is why it’s possible for two companies to use the same or a similar trademark. The products or services of each company are so different that customers are unlikely to think the same company is providing both.

For example, Stanley is the name of a brand of hand tools and the name of a brand of drinkware.

Both companies can use the name because hand tools and drinkware are so different that most customers won’t think it’s the same company making both.

Beware of Famous Trademark

There’s one important caveat to this rule: “famous” trademarks.

Most trademark issues come down to customer confusion. In other words, would customers think your business is connected to the other business?

But famous trademarks can get extra protection. If a trademark is famous enough, the owner may be able to object even if the products or services are different and even if customers probably would not be confused.

That is because famous trademarks can be protected against something called dilution. Dilution means another use weakens the famous brand or hurts its reputation.

So, while two smaller businesses may be able to use the same name in totally different industries, that does not mean you should use a name that is close to Disney, Tiffany, Nike, Apple, Coca-Cola, or another famous brand.

Using a Famous Trademark? Rebrand or Get Sued

It’s also worth noting that some famous brands are known for enforcing their rights aggressively, including through litigation.

Tiffany & Co., the jewelry brand, has a long history of enforcing its rights in the name “Tiffany” and its signature shade of robin’s egg blue.

Some of these businesses weren’t even in the luxury space, but Tiffany still reached out.

Recently, Buc-ee’s, the gas station chain, has also developed a reputation for aggressive enforcement.

Over the last decade, it has sued several businesses using cartoon animal logos that it claimed were too similar to its beaver mascot.

And, because these brands are famous, they would not need to prove customer confusion to win a trademark dilution claim.

The issue would be whether your use weakens the famous trademark or harms its reputation.

Famous brands are also, almost by definition, large companies that can easily afford the cost of trademark litigation.

So, if you find that the existing trademark registration is owned by a famous brand, you’re probably better off rebranding than risking a lawsuit against one of these companies.

What Comes Next?

That wraps up Scenario 3, which is when the registered trademark’s goods and services are very different from your goods and services.

Before this, we discussed Scenario 1, which is when the registered trademark’s goods and services are similar or in the same industry as you, and the business started using the trademark before you.

And Scenario 2, which is when the registered trademark’s goods and services are similar or in the same industry as you, and the business started using the trademark after you.

Key Takeaways

1. Trademark rights protect a name in connection with specific products or services, not every possible use of the word.

2. Businesses may be able to use similar trademarks if their industries are so different that customers are unlikely to be confused.

3. Famous trademarks are riskier because they may be protected against dilution even when customers are not likely to be confused.

4. Famous trademark belong to companies that have the resources to litigate, so it’s better to rebrand than risk getting sued by one.