Just because someone else has your name doesn’t necessarily mean you’re doomed! Trademark protection is categorized by goods and services (classes). This is how you can have DOVE chocolate and DOVE soap.
There are 45 different classes of goods and services available. Thirty-four are for goods, and 11 are for services. Sometimes it can be tricky to figure out which classes your goods or services fit into. For example, non-downloadable videos and downloadable videos are in different classes. Similarly, printed books are in a different class than downloadable books, and both of those are in different classes than selling books in a retail store.
For your goth clothing line, you’ll file in the clothing class (Class 25) and retail, wholesale, brick-and-mortar, and/or online sales (all in Class 35). For your horror-themed brewery, you’ll file in the beer/beverages class (Class 32), which is not to be confused with the wines and spirits class (Class 33) and maybe in the bar and restaurant services class (Class 43).
The key is the likelihood of confusion within the relevant marketplace. If a band in L.A. is named “The Crypt Keepers” (Class 9/41) and you run a haunted house business in Chicago called “Crypt Keepers” (Class 44), a strong argument can be made that consumers aren’t likely to be confused, so it’s ok for both businesses to have that name.
The more closely related the fields of business, the harder it is to show there isn’t or won’t be confusion. Fangtastic Wines probably would cause confusion with Fangastic Beers, even though they’re in different classes.
Making sure your mark is registered in the right classes is frighteningly important when it comes to proper trademark protection and use. This is an area in which DIY and online trademark services often get it wrong by using the wrong classes or leaving out important ones, especially when it comes to clothing, which is a topic big enough for a separate post. I’ve had to fix plenty of those mistakes.
The legal horror stories I’ve seen almost always follow the same plot: someone built something valuable and didn’t protect it, or signed something they didn’t understand, or waited until the damage was already done. You don’t have to be in that kind of story.
I help entrepreneurs, creators, and small business owners across the U.S. make smart, legally sound decisions about their IP: patents, trademarks, copyrights, and trade secrets. For Illinois clients, I also handle business formation and transactions.
Book a consultation at kingpatentlaw.com or call 217-714-8558.
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