Trademark Same Name Same Class: All You Need to Know
“Trademark, same name, same class” means more than one business entity registering the same trademark name in the same product and service class with the USPTO.3 min read
2. Trademark Names
3. Trademark Classes
4. Consequences of Picking the Wrong Class
Updated July 1, 2020:
“Trademark, same name, same class” is an expression that means more than one business entity registering the same trademark name in the same product and service class with the United States Patent and Trademark Office (USPTO).
Trademark Registration Overview
There are several classes in which trademarks can be registered. Some of them include machinery, communication services, pharmaceuticals, and so on. It goes without saying that confusion and trademark conflicts are bound to arise when the trademark names of different business entities are the same or sound similar in the same class. However, if the names only sound alike but aren't spelled alike, they can be in the same class without issues.
Some say that small companies or individuals can't pose any real legal threat to big companies in registering trademarks. While that may be true in some cases, there could be unpleasant surprises because the small companies or individuals may think they have an opportunity to legally extract huge compensation from the big companies and go all out for it.
Individuals or organizations that disregard trademark registration laws and decide to proceed with the registration of new trademark names, irrespective of possible conflict, will face unpleasant business and legal consequences. However, the truth is an entity doesn't have to officially register a name to acquire trademark protection. If it simply makes a name known in the marketplace, that may be all it needs to keep new applicants from looking to register.
When suggesting a name, a Google search and the use of sound judgment will serve well in indicating whether another business has legally secured that trademark name and might take legal action if someone registers it.
If you've been doing some digging on how to register a trademark for your business logo, name, or some other intellectual property, then, you must have discovered that you have to settle for a class of services or goods during the registration of your trademark with the U.S. Patent and Trademark Office. Registering your trademark name in a specific class is essential because the registration can provide protection for your trademark only within the class you choose during application.
The trademark classification system of the USPTO categorizes all services and goods into 45 classes – 11 for services and 34 for goods. Several goods and services are categorized into various classes. In some cases, the class names can be misleading. For instance, the clothing class (class 25) covers the following:
The meat, poultry, and fish class (class 29) covers the following:
- Jam (made of fruit pulp)
- Potato chips (another plant product)
The coffee, rice, and flour class (class 30) covers the following:
- Ice cream
The classification of trademarks functions in two ways. It gives pointers for the registration of trademarks and helps to detect the possibility of violating trademark rules. If a proposed trademark name is similar to an already registered one and could be confusing, the USPTO won't register it. To be that confusing, the trademark names must be identical and must belong in the same services or goods class.
The trademark office can pinpoint registered trademarks that are similar to yours through the class and description of your service or product. But the similarity of a registered trademark to yours isn't necessarily enough to keep you from registering yours if the services or products are dissimilar.
Consequences of Picking the Wrong Class
If you picked the wrong class for your trademark, you may be denied registration by the trademark office without a refund of your registration fee, which could mean the loss of hundreds of dollars and a waste of several months. Even if, for some reason, you successfully register your trademark in the wrong class, you'll eventually be in trouble when the mistake is discovered. Besides, you could be unknowingly infringing on someone else's registered trademark.
Again, the USPTO could register that trademark for a competitor in the right class, which you got wrong, and that could make it impossible for you to recover that specific trademark. Furthermore, even if you realize your mistake before a competitor takes your trademark, you still can't switch to the right class, and you can't switch your services or goods. Instead, you'll be required to start over with a new registration process.
If you need help with trademark name registration, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.