Law Office of Jason H. Rosenblum, PLLC

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Someone Already Trademarked a Word That I Want. Now What?! **Attorney Advertising**

We often hear from frustrated entrepreneurs and business owners who thought they’ve come up with the **perfect** name or phrase to trademark only to find out that someone else beat them to the punch. But does that mean the idea itself is off the table? Like most things in Trademark Law, the answer is that “it depends.”
 Understanding Classes of Goods or Services
When a person applies for a trademark with the United States Patent and Trademark Office (USPTO), they’ll be asked to select at least one International Class (IC) of goods and services associated with their mark to help the USPTO search for possible conflicting registrations. The description in the IC will also determine the scope of protection afforded by the trademark registration. There are currently 34 classes of goods and 11 services listed in the USPTO’s trademark identification manual that applicants can choose from.
In theory, someone may be able to secure a mark that is similar to another’s if it’s for an unrelated class of goods or services, and it’s not likely to cause confusion amongst consumers.
Say, for example, an athlete files a trademark for “SUPERSTAR” to apply to a specific class of goods that cover sneakers. Down the road, say a business coach inquires about using the name “SUPERSTAR” for her company that provides consulting services to dentists. There is a good chance that she’d be approved for this trademark because it’s not likely that a consumer would confuse SUPERSTAR Business Coaching with the trademark that the athlete has secured for sneakers.
On the flip side, if someone with an online retail store tries to apply for the trademark “SUPERSTAR” for the sale of t-shirts and hats, the USPTO will likely reject the application because, ultimately, the t-shirts and hats are in a class that is too closely related to sneakers, and consumers may be confused as to the source of the merchandise.
In the End, Trademark Guidance Matters
As you can see from these examples, the results you can expect when filing a trademark can vary. Two companies may file for the same trademark and have completely different outcomes because of the specific way the application was filed and the class that is selected. When in doubt about the likelihood of success for a name or phrase you’ve selected to trademark, talk to an attorney. If you’d like help getting started, our intellectual property lawyers are here to answer your questions and guide you through your options. Simply call 888-666-0062 to schedule an appointment.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.