Deciding whether goods or services are related is a key determination in trademark conflicts and in deciding whether a mark qualifies for federal registration. This is because the extent to which goods or services are related will determine whether marks used on them are likely to confuse consumers if the marks are the same or very similar to one another.
How closely related goods or services are considered to be depends on many factors, the most important of which are:
- The international product /service categories (international classes) to which the goods and services belong. If they are in the same class, they will be presumed to be related, and the U.S. Patent and Trademark Office will usually not register the second mark.
- Whether the goods and services pass through related marketing channels. For example, if goods are sold in similar outlets, marketed in similar media, placed near each other in stores, and generally considered similar by the consumer, they will be considered related.
The courts have developed a number of additional criteria to determine when one product or service is related to another, which are used in infringement cases. These are:
- the likelihood that the goods or services of one business will be mistaken for those of the other
- the likelihood that one business will expand its activities so that its goods or services will compete with those of another business
- the extent to which the goods or services of businesses have common purchasers or users
- the market relationship, if any, between the goods produced, or the services provided, by the two businesses
- the degree of distinctiveness of the mark in question when compared to a competing mark
- the degree of attention usually given to trademarks or service marks in the purchase of goods or services of the type provided by the two businesses
- the length of time during which the allegedly infringing business has used the designation, and
- the intent of the allegedly infringing business in adopting and using the mark in question.
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Are they related or not?
When products or services are considered to be totally unrelated, the courts will generally find that use of the same or a similar mark does not constitute infringement. On the other hand, if the products or services are found to be related, infringement may be found to exist, assuming the other requirements for infringement are also present.
Whether a product or service is considered related or unrelated depends on the exact facts of the case, how the criteria listed above are weighed in light of the facts, and the subjective perceptions of the judge, based on the evidence, as to whether the average consumer might be confused by the use of the same or similar marks on different products or services. In short, there is no firm dividing line between marks that are ruled to be related and those that are not.
It could still be dilution
Although the use of the same or a similar mark might not result in a finding of infringement under the “related/unrelated” analysis, this does not mean that the alleged infringer may continue to use the mark. Even though no infringement is found, the court may rule that the use of the allegedly infringing mark constitutes dilution of the original mark and restrict further use of the mark on that ground. However, the dilution rule only applies if the original mark is famous.
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