Hello everyone,

Today, we will discuss a situation that often causes unnecessary concern among trademark applicants: another owner has already registered a similar trademark within the same international class.

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

That conclusion is often premature.

Trademark law does not prohibit all similar marks. It also does not prohibit similar marks merely because they appear within the same international class. The purpose of trademark law is 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 goods 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.

The marketplace itself is also dynamic. Companies disappear. Products are discontinued. Businesses change direction. Some trademark owners actively use their marks, while others maintain registrations despite little or no visible commercial activity. Trademark disputes therefore frequently require looking beyond the registration database and examining the actual relationship between the goods and the realities of the marketplace.

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, but they do not determine whether two marks conflict.

Class 30, for example, includes coffee, tea, pasta, rice, honey, spices, cookies, bread, sauces, ice cream, candy, and many other food products. Although these goods fall within the same class, consumers do not necessarily expect them to originate from the same company.

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

The same principle applies in other classes. Class 3 includes cosmetics, perfumes, toothpaste, hair products, cleaning preparations, and laundry bleach. These products share an international classification, but their presence in the same class does not establish that consumers would expect them to have a common source.

The opposite can also be true. Goods or services placed in different classes may nevertheless be closely related in the marketplace.

The class number is therefore only a starting point. The real question is whether consumers are likely to believe that the respective goods or services come from the same source.

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 automatically prohibit similar words, identical words, goods in the same class, or even products that share some characteristics.

The question is much more specific:

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

This inquiry is highly fact-specific.

A trademark application therefore cannot be evaluated simply by comparing class numbers. The marks, the goods, the consumers, the marketplace, and the circumstances under which the goods are purchased must all be considered.

The DuPont Factors

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

Not every factor is equally important in every case. Depending on the particular dispute, certain factors may carry substantially more weight than others.

The similarity of the marks is obviously important. Marks are examined as a whole, taking into consideration their appearance, pronunciation, meaning, and overall 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.

Even identical marks may sometimes coexist when the circumstances make it unlikely that consumers will believe the respective goods originate from the same company.

Relatedness of the Goods

The relationship between the goods is often one of the most important issues in a Section 2(d) dispute.

Consumers may naturally expect shampoo and conditioner to originate from the same company. Coffee beans and certain coffee-related products may also have an obvious commercial relationship. The same may be true of beer and brewery restaurant services.

Other combinations are much less obvious.

Consumers may not ordinarily expect honey and frozen dumplings to originate from the same producer. The relationship between bird food and candy is even less apparent. Industrial solvents and perfume may technically appear within broad commercial classifications, but that does not mean consumers expect them to come from the same source.

The relevant question is not whether two products could theoretically appear in the same supermarket, online marketplace, or warehouse.

The question is whether consumers ordinarily expect companies in that particular industry to produce or sell both categories of goods under the same trademark.

Same Class Does Not Mean Related Products

Suppose there is an existing registration for the trademark MOMENTUM covering honey and preserves in Class 30.

Another applicant later seeks registration of MOMENTUM for frozen dumplings and prepared meals, also in Class 30.

Many applicants immediately assume:

“Same mark, same class — automatic refusal.”

But that conclusion oversimplifies trademark law.

The proper analysis asks whether companies in the relevant marketplace commonly produce both categories of goods under the same mark. Are honey and frozen dumplings normally manufactured by the same businesses? Are the products marketed to the same consumers in a manner that would suggest a common source? Do companies in the industry commonly expand from one category into the other?

The class number alone does not answer any of these questions.

Evidence does.

Similar Marks Can Coexist

The marketplace provides many familiar examples of identical words identifying unrelated businesses.

DELTA identifies an airline and also appears in connection with faucets. DOVE has been used for personal-care products as well as chocolate. UNITED appears in the names of numerous businesses operating in completely different industries.

Consumers understand that the same word may identify unrelated companies when the commercial contexts are sufficiently different.

Trademark law therefore does not grant an unlimited monopoly over a word itself.

It protects against confusing use of that word in commerce.

This distinction is fundamental. A trademark owner generally does not own a word for every imaginable product or service. The scope of protection depends on the nature of the mark, the goods or services, the strength of the mark, the marketplace, and the likelihood that consumers will believe there is a connection between the businesses.

Evidence Matters

An examining attorney should not rely merely on the fact that two marks are similar and appear within the same class.

The USPTO frequently uses third-party registrations to show that companies offer both categories of goods under the same trademark. Internet evidence may be used to demonstrate that businesses commonly produce or sell the goods together. Industry practices and retail evidence may also be relevant.

This type of evidence is important because relatedness should not be based entirely on theoretical assumptions.

If an examining attorney argues that two categories of products commonly originate from the same source, the applicant may respond by examining whether the evidence actually supports that proposition.

A successful response may show that the products serve different purposes, are manufactured by different types of companies, are sold through different channels, or are marketed to different consumers.

Trademark disputes are evidentiary disputes. Assertions matter much less than marketplace evidence.

There Is No Mechanical Formula

Trademark law is highly contextual.

Coffee and coffee-shop services may be closely related. Beer and brewery restaurants frequently have an obvious connection. Shampoo and conditioner are commonly sold by the same companies.

Honey and frozen dumplings present a different question. So may cosmetics and industrial chemicals, or bird food and candy.

There is no mechanical formula under which identical class numbers automatically establish relatedness.

This is precisely why trademark analysis cannot stop at the trademark search results page. A registration may initially appear threatening because the mark looks similar and the class number is identical. A closer examination of the goods may reveal a very different situation.

Channels of Trade Matter

The channels through which goods are sold can also be important.

Luxury skincare products sold through dermatologists or specialty retailers occupy a different commercial environment from inexpensive cosmetics sold primarily through supermarkets. Industrial adhesives marketed directly to manufacturers may have little in common with hobby glue sold to individual consumers.

The mere possibility that two goods could appear on the same large online marketplace does not necessarily establish meaningful overlap.

Modern marketplaces sell virtually everything. Amazon, Walmart, and other large retailers may carry thousands of unrelated categories of goods. If simply appearing in the same store established relatedness, almost every consumer product would become related to every other consumer product.

The analysis must therefore focus on the actual commercial relationship between the goods.

Consumer Sophistication Matters

The degree of care exercised by consumers can also affect likelihood of confusion.

Someone purchasing expensive industrial machinery, specialized software, medical equipment, or professional services is likely to investigate the seller carefully before making a decision.

An inexpensive grocery purchase may involve considerably less deliberation.

Sophisticated purchasers are not immune from confusion, but the level of care associated with the purchasing decision can reduce the likelihood that consumers will mistakenly assume a connection between two businesses merely because their trademarks are similar.

Actual Marketplace Experience Matters

Real-world coexistence may also provide useful information.

Suppose two companies have operated under similar trademarks for many years. During that time, customers have not confused the businesses, orders have not been misdirected, complaints have not arisen, and there is no evidence that consumers believe the companies are affiliated.

Those facts may support an argument that confusion is unlikely.

Of course, the absence of known confusion does not automatically resolve the legal question. The significance of such evidence depends on the circumstances, including the volume of sales and whether consumers had meaningful opportunities to encounter both marks.

Nevertheless, trademark law ultimately concerns consumer perception in the real marketplace.

A More Difficult Problem: Dormant Registrations

A particularly frustrating situation occurs when an older registration remains active even though the owner appears to have disappeared from the marketplace.

Imagine that Company A registered MOMENTUM for honey and preserves in 2011.

Years later, its website disappears. Its products vanish from stores. Its social-media accounts become inactive. Advertising stops, and the business appears to have ceased operations.

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

Company B then applies for MOMENTUM for frozen dumplings.

The examining attorney cites the older registration and refuses the new application under Section 2(d).

The applicant naturally asks:

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

This introduces a different and considerably more complicated issue.

The USPTO Generally Does Not Investigate Marketplace Activity

During ordinary examination, the USPTO generally relies on the existence of the registration.

An examining attorney does not normally conduct a full investigation into whether the registrant continues selling its products, whether its website still exists, whether customers remain, or whether the company continues operating.

An active federal registration carries legal presumptions.

As a result, even a registration belonging to a business that appears dormant may create a substantial obstacle to a new application.

This can be frustrating because the trademark register and the marketplace do not always tell the same story.

Trademark Rights Depend Upon Use

Trademark rights are fundamentally connected to use in commerce.

A registration does not create a perpetual right to reserve a word regardless of whether the trademark continues functioning as a source identifier.

Section 45 of the Lanham Act addresses abandonment. Generally, abandonment involves discontinuation of use accompanied by an intent not to resume use. Three consecutive years of nonuse constitute prima facie evidence of abandonment.

Thus, a trademark that has genuinely disappeared from commerce may eventually become vulnerable even if a registration still appears in the USPTO database.

Trademark law is intended to protect source-identifying goodwill. It is not designed simply to allow businesses to warehouse words forever.

Maintaining a Registration Is Not Always the Same as Marketplace Activity

The continued existence of a registration does not necessarily tell the complete commercial story.

A business may stop selling certain products while retaining historical registrations. It may dramatically reduce operations, change industries, discontinue a particular product line, or maintain a trademark despite minimal commercial visibility.

That does not mean every old or difficult-to-find registration is invalid.

It does mean that an applicant facing an apparently dormant registration may need to investigate further instead of assuming that the database reflects the complete marketplace reality.

The investigation may involve reviewing the registrant’s website, online stores, retailer listings, corporate records, advertising, social media, archived materials, and other evidence of actual commercial activity.

Options When the Registrant Appears Dormant

Several strategies may be available when an older registration creates an obstacle.

Sometimes contacting the registrant is productive. The parties may negotiate a coexistence agreement, consent agreement, assignment, or other resolution.

In other circumstances, a proceeding before the Trademark Trial and Appeal Board may be appropriate. If evidence supports abandonment or another valid ground, a petition to cancel the registration may become an option.

The Trademark Modernization Act also created expungement and reexamination procedures designed to address certain registrations involving nonuse.

These procedures are not appropriate in every case. They require factual investigation, evidence, legal analysis, and careful consideration of cost.

But the existence of a registration does not necessarily mean that an applicant has no available strategy.

Why Marketplace Reality Matters

Consider two very different situations.

In the first, the registrant actively sells products throughout the United States. Consumers recognize the brand. Advertising is extensive, retail distribution is substantial, and the business clearly continues to generate goodwill.

In the second, the registrant disappeared many years ago. Products cannot be found, the website is gone, advertising has stopped, and there is little evidence of continuing commercial activity.

Both registrations may initially look identical in the USPTO database.

But the marketplace realities are completely different.

That difference may become highly important depending upon the legal strategy available to the applicant.

Office Actions Are Not Necessarily the End

Receiving a Section 2(d) refusal should not automatically cause an applicant to abandon the trademark.

A refusal is an examining attorney’s legal determination based on the record at that particular stage of examination. Applicants have the opportunity to respond.

Depending on the facts, a response may involve narrowing the identification of goods, challenging the examining attorney’s evidence regarding relatedness, demonstrating different channels of trade, identifying differences among consumers, submitting marketplace evidence, negotiating with the registrant, appealing to the TTAB, or challenging the cited registration through an appropriate proceeding.

The correct strategy depends entirely on the particular case.

Sometimes the refusal is strong and changing the trademark is the commercially sensible decision.

In other cases, the refusal may rest on assumptions about the relationship between the goods that can be challenged with persuasive evidence.

Conclusion

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

A similar trademark in the same international class does not automatically prohibit registration. Even identical marks may sometimes coexist when the goods are sufficiently different and consumers are unlikely to believe that they originate from the same source.

The international classification system is useful for organizing trademark applications and registrations, but it is not a substitute for likelihood-of-confusion analysis.

The actual inquiry focuses on the marks, the relationship between the goods, trade channels, consumers, purchasing conditions, marketplace evidence, and the overall commercial circumstances.

Registrations themselves also do not always provide a complete picture of the marketplace. Some businesses cease operations while registrations remain active. Others discontinue particular products or abandon marks entirely. In appropriate circumstances, cancellation, expungement, reexamination, negotiation, or other strategies may become relevant.

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 may reveal that what initially appears to be an impossible trademark conflict is, in fact, a problem with a solution.