When selecting a new name and ascertaining whether it is available for use as a trade mark, a company cannot simply disregard third-party uses of confusingly similar marks that are made in connection with non-competitive goods or services. It is a common misperception that a new use of a mark will not infringe a senior use of a confusingly similar mark if the two uses are made in connection with products or services that do not compete with one another.
The test for trade mark infringement in the US is one of a likelihood of confusion, and does not require that the respective goods or services be identical or even competitive. Rather, for purposes of finding a likelihood of confusion, trade mark tribunals have held that it is sufficient that the goods or services be related in some manner or that the circumstances surrounding their marketing are such, that they would be likely to be encountered by the same persons in situations that would give rise to a mistaken belief that they originate from or are in some way associated with the same source – or even that there is an association or connection between the sources of the respective products or services. In fact, the more similar the marks, the lesser the degree of similarity between the goods or services at issue that is required for a likelihood of confusion to exist. If the marks are identical, then there only needs to be a viable relationship between the respective good or services.
Relatedness of product and service offerings to establish a likelihood of confusion can arise, for example, when confusingly similar marks are used by a senior user in connection with wine and a junior user in connection with restaurant or bar services. Although wine and restaurant services may not necessarily be competitive product and service offerings, they are often considered complementary as they are typically encountered by the same consumers in the same places.
More specifically, restaurants and bars serve wine by the bottle and consumers see both the name of the restaurant and the brands of the wines that they serve in the same setting (they often appear on the very same menu). In addition, it is common practice for restaurants to offer wines bearing the name of the restaurant that are exclusively branded for, and bottled and served at the restaurant. Industry practice becomes a highly relevant factor when evaluating the relatedness between product and service offerings (and therefore, the likelihood of confusion).
This example, although illustrative of certain risks that exist when adopting a new mark, may not always be universally applied. Courts in the US often come to inconsistent results when applying the likelihood of confusion standard. When considering the adoption of a proposed new name, and conducting the appropriate clearance searches that should precede such adoption, prospective brand owners should be mindful of existing third-party marks that are used in connection with not only competitive products and services but related ones as well.
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| Karen Artz Ash
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Bret J Danow
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Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com