When business owners begin the trademark process, they often make a surprising discovery: another company is already using the same name.
Their first thought is usually simple:
“If someone else already trademarked the name, does that mean I cannot use it?”
Not necessarily.
Trademark law does not give one business ownership of a word for every possible product or service. Instead, trademark rights are generally connected to the goods and services associated with the mark and the way consumers encounter those goods and services.
That is why two companies may sometimes use the exact same word without violating each other’s trademark rights.
One of the examples used by the United States Patent and Trademark Office (USPTO) is DOVE. The same word can identify soap on the one hand and chocolate on the other hand because those products are different enough that consumers generally would not assume they come from the same company.
The same concept helps explain why consumers can encounter similar or identical brand names in different industries without necessarily becoming confused.
But this rule is more complicated than simply saying, “The products are different.”
The central question in many trademark conflicts is whether consumers are likely to be confused about who is providing the product or service.
Understanding that concept can help business owners make better decisions before investing in a brand name, logo, website, packaging, advertising, or federal trademark application.
A Trademark Does Not Give You Ownership of a Word Everywhere
One of the biggest misconceptions about trademarks is that registering a word gives the owner complete control over that word.
It does not.
A trademark identifies the source of particular goods or services.
For example, imagine a fictional company called BLUE HARBOR.
One company might use BLUE HARBOR for accounting services. Another business might want to use BLUE HARBOR for surfboards.
The fact that the names are identical does not automatically mean there is a trademark conflict.
The USPTO explains that a trademark is connected to the specific goods or services offered under that mark. Trademark protection can allow an owner to prevent others from using the same or a similar mark for related goods or services when the use is likely to cause confusion.
This distinction is important.
Trademark law is not simply asking:
“Are the names the same?”
It is asking a much more useful question:
“Would consumers likely believe these goods or services come from the same source?”
The DOVE Example
DOVE provides an easy way to understand the concept.
Imagine seeing DOVE on a package of soap.
Now imagine seeing DOVE on a package of chocolate candies.
The word is identical.
D-O-V-E.
But the products are very different.
DOVE for soap and DOVE for chocolate is an example of identical trademarks that exist for different owners because bath soap and chocolate candies are not so related that consumers would think the goods are provided by the same company.
A consumer buying chocolate would not ordinarily assume that it was produced by the company responsible for a personal-care soap simply because both products use the word DOVE.
This illustrates an important principle of trademark law:
Two trademarks can be identical without necessarily creating a likelihood of confusion.
The reverse is also true.
Two trademarks do not have to be identical for consumer confusion to exist.
Names that look different on paper may still be considered confusingly similar if they sound alike, have similar meanings, or create a similar commercial impression.
What Is “Likelihood of Confusion”?
“Likelihood of confusion” is one of the most important concepts in U.S. trademark law.
The basic question is whether consumers are likely to mistakenly believe that two products or services come from the same source, or that the businesses are somehow connected.
The USPTO identifies likelihood of confusion as one of the most common reasons a federal trademark application may be refused.
Two major questions are part of that analysis:
- How similar are the trademarks?
- How related are the goods or services?
Both questions matter.
Suppose a company owns the trademark SUNSET for shoes.
Another business applies for SUNSET for shirts.
The products are not identical, but they are closely related. They may be sold in the same stores, advertised to the same consumers, and even displayed near each other.
Consumers might reasonably believe SUNSET shoes and SUNSET shirts come from the same company.
Now compare that with SUNSET for shoes and SUNSET for plumbing services.
Those goods and services are much farther apart.
The fact that the word SUNSET is identical does not automatically create confusion.
Goods and Services Do Not Have to Be Identical
When the goods and services are not identical, the trademark analysis becomes more complicated.
Business owners sometimes believe they are safe as long as their product is not exactly the same as another company’s product.
That is not the rule.
The USPTO explains that goods and services can be considered related even when they are not identical.
For example:
A company selling shirts could potentially have a conflict with a company selling hats.
A bank could potentially have a conflict with a company offering mortgage lending services.
A clothing company could potentially have a conflict with a retail store offering clothing.
Why?
Because consumers may expect those goods or services to come from the same company.
The legal analysis focuses on the relationship between the goods or services in the marketplace.
How Do We Know Whether Products Are Related?
There is no single rule that answers every case.
Several practical questions can help.
Would the products normally be sold by the same type of company?
Would they appear in the same stores?
Would they be marketed to the same customers?
Are they commonly used together?
Would consumers expect a company selling one product to also sell the other?
Could the products appear in the same advertising?
These questions help determine whether consumers might assume there is a connection between the businesses.
Consider peanut butter and jelly.
They are different products, but they are commonly used together and marketed to similar consumers for PB & J sandwiches.
Shoes and socks are another example; so are barbecue grills and charcoal.
Products do not need to be identical to be related for trademark purposes.
Trademark Classes Help Organize the System—but They Do Not Decide Everything
Federal trademark applications identify the goods and services associated with a trademark. Those goods and services are organized into international classes.
There are 45 international trademark classes covering all of the goods and services.
This system is useful, but business owners should not assume that being in a different trademark class automatically eliminates a potential conflict. It does not.
The USPTO specifically warns that goods or services do not have to fall within the same international class to be considered related. Likewise, goods or services in the same class can be unrelated.
Two products could fall into separate classes but still travel through similar channels of trade or be offered by the same types of businesses.
The class number does not decide whether goods or services are related.
Similar Names Can Also Create Problems
Trademark conflicts are not limited to identical words.
The USPTO may consider trademarks confusingly similar based on their:
- Appearance
- Sound
- Meaning
- Overall commercial impression
Imagine a company owns the trademark KLEAR for bottled water.
Another company attempts to register CLEAR for a similar bottled-water product.
The spelling is different. But when spoken aloud, the names sound identical.
Consumers may not know whether they are dealing with two separate companies.
Trademark law therefore looks beyond spelling.
A small change to an existing trademark does not necessarily make a new trademark safe.
Adding a letter, changing a vowel, using a plural version, or placing another word next to an existing mark may not solve the problem if consumers are still likely to view the marks as similar.
The Stronger the Similarity, the More Careful the Analysis
Identical trademarks deserve particularly careful review.
USPTO guidance explains that when two marks are identical or nearly identical, the relationship between the goods or services may not have to be as close to support a finding of likely confusion.
In simple terms:
The closer the names are, the less related the goods and services need to be before confusion becomes a concern.
Imagine two companies using exactly the same unusual brand name.
One sells handbags. The other sells shoes.
Those are technically different products, but consumers may be accustomed to fashion brands selling both.
The second company cannot simply argue, “We sell shoes, not handbags.”
Consumers may expect both products to come from the same fashion company.
Compare that situation with an identical name used by a plumbing company and a company that manufactures children’s board games.
The industries, customers, sales channels, and consumer expectations may be very different.
That could produce a very different trademark analysis.
What About Famous Trademarks?
Another important issue is the strength and recognition of an existing trademark.
Some trademarks have become so widely recognized that their owners may have broader rights than a smaller or less distinctive brand.
Federal trademark law can provide additional protection to certain famous marks, including protection against uses that may dilute the distinctive quality of the famous mark.
This means that finding a famous brand name in a completely different industry should not be treated as an invitation to use it. In fact, use of the trademark in a different industry may cause dilution even if there is no likelihood of consumer confusion.
Choosing an extremely well-known brand name for an unrelated business could create legal problems even if your products or services are different.
This is one reason trademark searching requires more than checking whether two businesses fall into different categories.
Registration Is Not the Same as Owning a Word
Another useful way to think about trademark rights is to separate the word from the commercial source it identifies.
A trademark’s job is to tell consumers:
“This product or service comes from this particular source.”
That is why trademark law cares so much about consumer confusion.
If consumers can easily understand that two identical names identify completely different businesses in unrelated markets, coexistence may be possible.
If consumers are likely to believe the businesses are connected, sponsored by one another, or operated by the same company, there may be a problem.
That distinction is at the heart of many trademark disputes.
Why a Google Search Is Not Enough
Before launching a new brand, many business owners type the proposed name into Google.
That is a useful starting point.
It is not a complete trademark search.
The USPTO recommends conducting a comprehensive clearance search before applying for federal registration.
A proper search should also look beyond exact matches. It looks at words that may look the same, sound the same, or mean the same thing, including foreign-language equivalents.
The search should also examine related goods and services.
This is one of the areas where trademark searches become more complicated than they initially appear.
“The Name Was Available” Does Not Mean the Trademark Is Available
Business owners also commonly confuse business-name availability with trademark availability.
A state may allow you to create a corporation or LLC under a particular name.
A domain registrar may allow you to purchase the matching .com website address.
A social media platform may show that the username is available.
None of those facts necessarily mean that you have the right to use the name as a trademark.
Corporate names, domain names, social media usernames, and trademarks serve different legal purposes.
Before making a major investment in a brand, it is important to investigate trademark rights separately.
What Happens When You Apply for Federal Registration?
When a federal trademark application is filed, a USPTO examining attorney reviews the application.
As part of that process, the examining attorney searches federal trademark records for marks that could conflict with the proposed trademark.
If the examining attorney believes the new mark is confusingly similar to an existing registered mark for related goods or services, the USPTO may issue a refusal based on likelihood of confusion.
This can occur even when the trademarks are not identical.
It can also occur when the goods or services are not exactly the same.
That is why a thoughtful trademark search before filing can be valuable.
Discovering a serious conflict early, before investing heavily in a brand, is generally preferable to discovering it after packaging has been printed, signs have been installed, websites have been built, and advertising campaigns have begun.
Can Two Businesses Trademark the Exact Same Word?
The answer is sometimes yes.
But the analysis should never stop there.
The more useful question is: What goods or services does each business offer under the brand?
If You Have Questions, We Can Help.
If you have questions about the ability to register your trademark, reach out to us to discuss your trademark. We will talk through the process and budgets to figure out the best way to protect your brand.
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