One of the most common misconceptions among entrepreneurs is the belief that if another company owns a similar trademark in the same international class, registration is impossible. Many applicants receive a refusal from the United States Patent and Trademark Office (“USPTO”), see that the cited mark is in the same class, and conclude that their application is doomed.

That conclusion is often premature.

Trademark law does not prohibit all similar marks. Nor does it prohibit similar marks merely because they appear within the same international class. Instead, trademark law seeks to prevent consumer confusion. The central question is not whether two products happen to share the same class number, but whether consumers are likely to believe that the products or services originate from the same source.

This distinction is important because trademark classes are administrative categories, not legal boundaries. A single class may contain products that are closely related, products that are somewhat related, and products that consumers would never expect to come from the same company.

Moreover, the marketplace itself is dynamic. Companies go out of business. Products disappear. Brands change direction. Some trademark owners actively use their marks, while others maintain registrations despite little or no commercial activity. Thus, trademark disputes frequently require looking beyond the register and examining actual marketplace realities.

The Great Misunderstanding About Trademark Classes

Clients frequently ask:

“There is already a similar trademark in Class 30. Doesn’t that mean I cannot register mine?”

The answer is simple:

No.

International classes exist primarily for administrative convenience. They organize millions of trademarks into manageable categories. They do not determine whether two marks conflict.

Class 30, for example, contains:

• Coffee;
• Tea;
• Pasta;
• Rice;
• Honey;
• Spices;
• Cookies;
• Bread;
• Sauces;
• Ice cream;
• Candy;
• Frozen foods.

These products are grouped together because they are broadly related food items. Yet consumers may have entirely different expectations regarding their source.

A producer of honey is not necessarily expected to manufacture frozen dumplings. A spice company is not automatically assumed to own an ice cream business.

Similarly, Class 3 includes:

• Cosmetics;
• Perfumes;
• Toothpaste;
• Hair products;
• Cleaning preparations;
• Laundry bleach.

These products share a class, but consumers may not believe they originate from the same company.

The classification system itself recognizes this reality.

The Real Question: Likelihood of Confusion

Section 2(d) of the Lanham Act prohibits registration of marks that are likely to cause confusion with previously registered marks.

Notice what the statute does not prohibit.

It does not prohibit:

• Similar words;
• Identical words;
• Same classes;
• Similar products.

The focus is much narrower.

The question is:

Would ordinary consumers likely believe that the products come from the same source?

This analysis is highly fact-specific.

The DuPont Factors

The leading case, In re E.I. du Pont de Nemours & Co., established thirteen factors relevant to likelihood of confusion.

Not all factors are important in every case, but several deserve special attention.

Similarity of the Marks

The marks are examined as a whole, considering:

• Appearance;
• Pronunciation;
• Meaning;
• Commercial impression.

For example:

PREMIUM LUX

and

PREMIUMLUXE

may appear very similar.

BIOBRAND

and

BIO BRANDS

may sound nearly identical.

But similarity alone does not determine the outcome.

Courts have repeatedly recognized that even identical marks may coexist when consumers are unlikely to assume a common source.

Relatedness of Goods

This factor often determines the case.

Consumers might expect the same company to sell:

• Shampoo and conditioner;
• Coffee beans and coffee mugs;
• Wine and wine glasses;
• Beer and brewery restaurants.

However, consumers may not expect the same source to produce:

• Honey and frozen dumplings;
• Bird seed and candy;
• Industrial solvents and perfume;
• Pet food and chocolates.

The key inquiry is not whether products can theoretically be sold in the same supermarket.

Instead, the question is:

Do consumers ordinarily expect these goods to come from the same company?

Same Class Does Not Mean Related Products

Suppose there exists a registration for:

MOMENTUM

For:

• Honey;
• Preserves.

Class 30.

An applicant seeks registration of:

MOMENTUM

For:

• Frozen dumplings;
• Prepared meals.

Also Class 30.

Many people immediately conclude:

Same class plus same mark equals automatic refusal.

But that conclusion oversimplifies trademark law.

The proper questions include:

Are these products commonly produced by the same companies?

Are they marketed to the same consumers?

Do they travel through the same channels of trade?

Is there evidence that consumers associate these products with a single source?

Do companies in this industry commonly offer both categories?

Without evidence, assumptions alone are insufficient.

Similar Marks Can Coexist

Trademark history provides numerous examples.

DELTA

• Delta Air Lines;
• Delta Faucet.

DOVE

• Dove soap;
• Dove chocolate.

UNITED

• United Airlines;
• United Van Lines.

PIONEER

Used across multiple industries.

Consumers understand that identical words can identify unrelated businesses.

Trademark law does not create monopolies over words themselves.

It protects against confusion.

The Examining Attorney Must Produce Evidence

An examining attorney cannot simply write:

“The marks are similar and appear in the same class.”

Instead, the USPTO typically relies on:

Third-party registrations

Showing companies that offer both products under one mark.

Internet evidence

Showing that businesses commonly provide both goods.

Industry practices

Demonstrating marketplace expectations.

Retail channels

Showing overlap in distribution.

The burden is not merely theoretical.

Evidence matters.

Same Products Can Produce Different Outcomes

Trademark law is highly contextual.

Coffee and coffee shops

Likely related.

Beer and brewery restaurants

Likely related.

Clothing and jewelry

Often related.

Shampoo and conditioner

Related.

But:

Honey and frozen dumplings

Possibly unrelated.

Cosmetics and industrial chemicals

Probably unrelated.

Bird food and candy

Less likely.

No mechanical formula exists.

Channels of Trade Matter

Products may travel through different markets.

Luxury skincare sold through dermatologists differs from discount cosmetics sold at supermarkets.

Industrial adhesives sold to manufacturers differ from hobby glue sold to consumers.

Products targeting sophisticated professionals are viewed differently from impulse purchases.

Channels of trade often become decisive.

Consumer Sophistication Matters

Consumers buying:

• Surgical equipment;
• Industrial machinery;
• Specialized software;
• Medical devices;

exercise a greater degree of care.

By contrast, consumers purchasing inexpensive grocery items may make quick decisions.

Sophisticated consumers are less likely to be confused.

Actual Marketplace Experience Matters

Suppose two companies have coexisted for ten years without confusion.

Customers have never mistaken one for the other.

No misdirected orders.

No complaints.

No evidence of mistaken identity.

Such facts may support coexistence.

Trademark law is grounded in reality, not hypothetical confusion.

A More Difficult Problem: Dormant Registrations

Perhaps the most frustrating scenario involves older registrations whose owners appear absent from the marketplace.

Imagine:

In 2011, Company A registers:

MOMENTUM 

For:

• Honey;
• Preserves.

Years later:

• The website disappears.
• Products vanish from stores.
• Social media accounts become inactive.
• No advertising exists.
• The business appears defunct.

Nevertheless, the registration remains active because maintenance documents continue to be filed.

Meanwhile, Company B seeks registration for:

MOMENTUM

For frozen dumplings.

The examining attorney issues a Section 2(d) refusal.

The applicant naturally asks:

“But they don’t even sell anything anymore.”

The USPTO Generally Does Not Investigate Marketplace Activity

This surprises many applicants.

The examining attorney generally relies upon the registration itself.

The Office does not ordinarily investigate whether:

• Products are still sold;
• Customers still exist;
• The website remains active;
• The company is alive.

An active registration carries legal presumptions.

Thus, even a seemingly dormant registration may create obstacles.

Trademark Rights Depend Upon Use

Trademark rights arise from use in commerce.

A registration does not grant perpetual ownership over words.

Section 45 of the Lanham Act provides that abandonment occurs when:

1. Use has been discontinued; and
2. There is no intent to resume use.

Three consecutive years of nonuse constitute prima facie evidence of abandonment.

Trademark law does not reward warehousing.

The purpose of trademark law is protecting goodwill, not allowing owners to reserve words forever.

Maintaining a Registration Is Not Necessarily Proof of Active Use

Some businesses:

• Stop selling products;
• Retain old registrations;
• File maintenance documents;
• Maintain token use;
• Change industries;
• Keep marks alive for defensive purposes.

Thus, registration and actual commercial activity are not always the same.

An applicant facing such a situation should investigate carefully.

Options When the Registrant Appears Dormant

Contacting the Registrant

Sometimes coexistence agreements are possible.

Sometimes the registrant is willing to assign the mark.

Sometimes no objection exists.

Petition to Cancel

If abandonment exists, a cancellation proceeding before the TTAB may be appropriate.

Grounds include:

• Abandonment;
• Fraud;
• Genericness;
• Nonuse.

These proceedings require evidence and may be costly.

Expungement Proceedings

The Trademark Modernization Act introduced expungement and reexamination procedures.

These mechanisms allow challenges where products were never used or are no longer used.

Such procedures can provide less expensive alternatives to cancellation.

Why Marketplace Reality Matters

Imagine two scenarios.

Scenario One

The registrant actively sells products nationwide.

Customers know the brand.

Advertising exists.

Retail distribution continues.

Confusion concerns are genuine.

Scenario Two

The registrant disappeared ten years ago.

No products.

No stores.

No website.

No customers.

No advertising.

Yet the registration survives.

The legal analysis becomes more complicated.

Trademark law protects consumers and goodwill—not empty registrations.

Office Actions Are Not Necessarily the End

Receiving a Section 2(d) refusal should not trigger immediate abandonment.

Possible responses include:

Narrowing the identification of goods.

Demonstrating different channels of trade.

Showing different consumers.

Producing marketplace evidence.

Negotiating coexistence agreements.

Filing appeals to the TTAB.

Seeking cancellation or expungement.

Many applicants abandon rights unnecessarily because they mistakenly believe the same class automatically means defeat.

Conclusion

Trademark law is far more nuanced than many business owners realize.

A similar mark in the same class does not automatically prohibit registration.

Even identical marks may coexist when:

• Products are different;
• Consumers are sophisticated;
• Channels of trade diverge;
• Marketplace realities differ;
• Confusion is unlikely.

Moreover, registrations themselves do not always reflect current marketplace conditions. Some registrants cease doing business while continuing to maintain their registrations. Others abandon marks entirely. In such circumstances, cancellation and expungement procedures may provide additional avenues for applicants.

Ultimately, trademark law seeks to prevent consumer confusion—not to grant perpetual monopolies over words. A careful analysis of the DuPont factors, marketplace realities, and the actual relationship between the products often reveals that what appears to be an impossible conflict may, in fact, be a problem with a solution.

Disclaimer: This article is intended for educational purposes only and does not constitute legal advice. Trademark disputes are highly fact-specific, and each situation should be evaluated individually.