Trademarks and the goods do not need to be identical in order for there to be a conflict between them. They only need to be similar and related.
Let’s take a look at an example. What if the mark “X-SEED” is registered for “agricultural seeds” and you want to register the mark “EXCEED” for “live plants.” At first glance, the marks are not identical and the goods are not identical. They are, however, similar and related.
In particular, when spoken, the marks sound similar. The U.S. trademark office considers all possible pronunciations of a mark, so both marks may be pronounced the same way, even if one party may have intended the mark to be pronounced differently.
In addition, the goods here are related. In other words, the same companies that sell “live plants” also sell “agricultural seeds.” As such, consumers are likely to believe that both the live plants and the agricultural seeds come from the same company, right: the “X-SEED” company.
In this example, your mark would be refused and you would not be allowed to register it with the trademark office . You would have wasted valuable time and money that you could have otherwise spent on selecting a mark that is actually registrable.
Are there are any situations where identical marks can co-exist? Yes, there are. Generally, two identical marks can co-exist, so long as the goods and services are unrelated. Let’s say, for example, that the mark “LINDA” is registered for “gardening gloves.” But you would like to register the mark “LINDA” for “photography services.” Customers aren’t accustomed to seeing gardening gloves and photography services coming from the same company, so those goods and services are considered to be unrelated and there is no likelihood of confusion. So, yes, in some cases two identical marks can register.
So, that’s one aspect of selecting a mark. You want to choose or create one that isn’t likely to cause confusion with another mark. Another important consideration is choosing a mark that is legally protectable from the start. You want a mark that you can defend against others who might try to use a same or similar mark.
Marks that are immediately protectable are considered inherently “strong.” “Weak” marks, on the other hand, are terms that describe some aspect of your goods and services. Weak marks often are more difficult and costly to protect and enforce than strong marks.
The simplest way to think about weak and strong marks is to picture them on a spectrum or on a gauge. Along the spectrum you have generic marks, then descriptive, suggestive, fanciful, and arbitrary marks.
The weakest marks aren’t even really marks at all. They are generic words that are incapable of identifying source. Think “BICYCLE” for “bicycles” or “MILK” for “a dairy-based beverage.” These are common, everyday names for goods and services and they are not registrable by themselves.
Descriptive terms are warmer than generic terms, but they are still very hard to protect. They directly tell you something about the goods and services. Think “CREAMY” for “yogurt” or “THE ULTIMATE BIKE RACK” for “a bicycle rack.” Descriptive terms generally are not registrable without showing that the mark has, through long use, become a source identifier.
Things certainly get a little bit stronger when we get to suggestive marks. As the name implies, they “suggest” something about the goods and services, some characteristic of the goods and services. Think “QUICK N’ NEAT” for “pie crust” or “GLANCE-A-DAY” for “calendars.”
These types of marks are registrable and are the next best thing to the hottest and strongest types of marks: “fanciful” marks and “arbitrary” marks. Fanciful and arbitrary marks are the easiest types of marks to protect because they are inherently distinctive and they immediately function as source identifiers. Because they are typically creative or unusual, it’s less likely that other parties are using them for related goods and services.
Fanciful marks are invented words with no dictionary or other known meaning. Think “XEROX” or “CISCO” or “MICROSOFT.”
Arbitrary marks are actual words with a known meaning, but the words have no association or relationship with the identified goods and services. Right? Think “APPLE” for computers, “BLACKBERRY” for smartphones, or “GAP” for clothing.
Marketing folks often recommend adopting a trademark that is descriptive, because it immediately tells the consumer something about your product or service. And from that point of view, it makes sense. But, from a legal perspective, adoption of a descriptive mark may end up costing you more money in the long run. Since it isn’t immediately protectable, you cannot register it without showing that consumers have come to understand that it does not just describe the goods. It can be costly to develop rights in a descriptive mark and to enforce those rights. You might need to give up the mark altogether and start over with a completely new mark. That could be a very expensive road to go down.
Choosing a fanciful mark or an arbitrary mark is a great way to help consumers identify the source of your goods and services and distinguish them from the goods and services of others. These kinds of marks are immediately protectable. Register my Trademark Band Name