The trademark process necessarily requires that you choose the classes of goods and services for which you want the trademark. This leads to a rather obvious question. If you choose a class that is different from an already registered trademark, does that mean you don’t have to worry about any infringement claims?
Lessons
What are we talking about here? Well, the PTO divides brands into 45 total categories called classes. One class is for chemicals, while another class is for clothes, etc. The classes are really designed to try to bring some form or organization to the trademark database.
Lawsuits
When considering infringement issues, the first thing to understand is that anyone can go to court and file a lawsuit. They can even use a form and spend a few hundred dollars to do it. Please note that I am not saying that they will prevail in your lawsuit. However, even if it is silly, you will have to spend a good amount of money to defend it. That alone should be a factor in your evaluation. If you spend $100,000 “winning” a lawsuit, did you really win?
infringing?
So, let’s get to the heart of this thing. If I register a similar mark in a different class than the mark previously filed, will I be immune from infringement? The answers, as with much of life, are… it depends. What we can clearly say is that filing in a different class does not automatically protect you from an infringement claim. Let’s take a closer look.
The issue at hand is the strength of the brand in question. Let’s say I want to register a trademark for Cheezy Wheels, a pizza that I’m going to make and sell across the country. I make a trademark and find that there is already a trademark, but in a classification for toys, since the product is pimped car models for children to play with. Will they sue me for infringement? Probably not. The toy brand is not particularly strong and my brand does not create confusion among consumers.
Now let’s look at a different situation. Amazon.com is obviously a well-known brand. What happens if I try to open Amazon Smart Phones and register it as a trademark? Will they sue me? Probably. Will I lose the trial? Maybe. The problem is that Amazon is a very strong brand and well known by the public. If I start selling Amazon smartphones, many consumers will assume that Amazon.com sells the product. In short, there will be confusion among consumers and that means that you will most likely lose demand, even if the smartphones belong to a different class than the one on the Amazon website.
As a very general guide, classes divide grades. It is vital that this does not always mean that you cannot be arrested for infringing on another trademark.
