Cross-Class Confusion: Your Rights are Stronger than You Might Think!


You’ve done the work of securing a federal trademark registration and now face the matter of enforcement against a potential infringer. Are the classes and goods specified in that registration now a double-edged sword?

Say your business, Company A, sells a premium line of clothing for chefs, widely recognized in the restaurant industry for both its durability and stylish design. You’ve worked hard to build the brand and made sure to protect its reputation by registering Company A’s trademarks with the USPTO—in particular, Class 25 for clothing. Much to your dismay, however, a customer has brought to your attention Company B’s new line of kitchen utensils that uses a conspicuously similar name and logo. While initially sold at retail outlets, this new line of cutlery has grown in popularity with some of the nation’s top restaurants. When you reach out to Company B for an explanation, they direct you to your own now-glaring lack of any registration for goods in Class 21 for household utensils. Your brand, despite taking the cooking world by storm, is not quite famous enough to pursue a dilution claim. Are you out of luck in pursuing a claim for infringement?

Fortunately, no (at least not yet). First, while trademark classes may be helpful when searching the registry for the existence of preexisting similar marks, these classifications don’t actually limit or extend rights in the mark themselves. Under 15 U.S.C. § 1112, the Director of the USPTO has the ability to establish classifications of goods and services “for the convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” In other words, a mark’s classification has no bearing on the likelihood of confusion test used to determine infringement. See Malarkey-Taylor Assocs., Inc. v. Cellular Telecommunications Indus. Ass’n, 929 F. Supp. 473, 476 (D.D.C. 1996). This makes sense in practice as these classifications are largely internal and have little to do with how consumers actually encounter these goods in the marketplace—you may have trouble recalling, for example, Classes 30, 32 or 43 coming up the last time you picked up dinner at the drive-thru. Different classes of goods will thus be no defense for Company B.

Likewise, the owner of a registered mark isn’t limited to pursuing claims that only involve the goods or services actually identified in their registrations. It would be illogical if the owners of unregistered marks, never having had to specify their particular goods or services in a trademark application, were to enjoy broader trademark protection than those who undertook the time and cost of registering a mark with the USPTO. Such an outcome would hardly be an incentive to seek federal registration. Instead, under the Lanham Act a registered mark is prima facie evidence of both the validity of the mark and the right to use it in commerce in connection with the goods or services specified in the registration. See 15 U.S.C. § 1115. That can be helpful in a number of situations, including establishing ownership of a mark and preventing the registration of other similar marks in the specified fields. But gaps in your registration’s goods and services coverage may not necessarily be a fatal obstacle to your infringement claim.

So what does matter in this dispute? Again, Company A’s brand is not famous—yet. If it was, you may be able to pursue a dilution claim against Company B regardless of whether or not their use of a similar mark is likely to cause any confusion. See 15 U.S.C. § 1125(c). Otherwise, under the Lanham Act, infringement includes the use of the same or a similar mark in commerce on any goods or services in a manner likely to cause confusion, mistake or deception, whether those goods or services are in the same classes or not. See 15 U.S.C. § 1114. Here, the potential infringer is selling kitchen utensils using a similar mark as your line of chef’s clothing. While your registrations may not mention utensils, that doesn’t mean the infringer is “home free.” Instead, the question for the purposes of determining infringement would be whether their use of the similar mark for utensils was likely to cause confusion, mistake or deception with your use of the mark for chef’s clothing—not whether utensils and clothing fall in the same classes of goods. Viewed in this light, the situation may be less favorable for Company B: while they’re selling different products, they’re nevertheless cooking-related products that the same purchasers may encounter side-by-side with Company A’s products in the marketplace, in a way likely to cause confusion. It’s not a stretch to imagine, for example, a restaurateur shopping online in preparation for the launch of their new eatery and mistakenly assuming the two brands are the same.

In short: when an infringer tries to defend its use of a mark for goods or services in a different class than those in your registration, remember that your rights may be broader than the four corners of your registration suggest.

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.


About the Author: David F. Gomez

David Gomez represents clients in trademark, copyright, patent and other intellectual property disputes.

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