Trademark written in wooden cubes

Can Someone Use the Same Trademark for a Different Product?

David H. Schwartz, INC March 22, 2023

Under common law, anyone can create a trademark for a name, symbol, logo, or saying by affixing the TM (™) symbol behind it, but ownership of the trademark would be limited to the geographical area in which it is being used. The originator might also not have sufficient proof of primary ownership if someone else used the same trademark.  

That is why it’s important to register your trademark with the United States Patent and Trademark Office (USPTO), which provides nationwide proof of ownership and date of registration in case an infringement case arises. 

Some trademarks are so famous and nationwide – even international – that it would be foolish to even consider infringing on them. Examples include McDonald’s, Apple, Coca-Cola, and Nike. Even the phrase “Let’s get ready to rumble” has USPTO protection. 

However, the USPTO registers trademarks according to a system of classes for goods and services. That’s why you can have both Delta faucets and Delta Airlines enjoying trademark protection while using the same name. The same goes for Dove chocolate and Dove soap; both are registered trademarks owned by two different companies. 

If you’re looking to register a trademark for a product or service and are worried that your name, logo, symbol, or slogan is already in use and you might be infringing, contact the Law Offices of David H. Schwartz, INC.  

Attorney David Schwartz specializes in commercial litigation in the Greater San Francisco Bay Area and can advise you of any potential legal problems. Or, if your trademark is being infringed upon, he can take the proper legal steps to protect you. His firm also serves clients in San Jose, San Mateo, Santa Clara, Oakland, and throughout Alameda County. 

Can I Use the Same Trademark for a Different Product? 

The answer is yes if your product falls into a different class than one that is already registered. The USPTO has 45 classes of products and services: 34 of them for products, the rest for services. So, you would need to do a search of trademarks in the product category you’re seeking to register.  

The Whopper, for instance, might be registered as a hamburger under Class 29, Meat and Processed Food Products, but you want to use Whopper for a stapling gun under Class 7, Machinery Products. In this case, you should be able to register your mark.  

How the USPTO Determines Similarities 

The major consideration the USPTO and its trademark examiners use in determining whether the same mark can be used for a different product or service is whether it will cause confusion among consumers. Remember, trademarks have to be in commercial use to be protected, although you can also apply for an “intend to use” trademark to establish a date of origin. 

In addition to any confusion a similar trademark might cause, the USPTO examiner will also consider:

  • Whether an existing mark is famous (Golden Arches) 

  • How similar the avenues of trade are between the products or services they represent 

  • Whether there has already been confusion caused by the similarity 

  • The conditions under which sales are made (geographic location, online, television) 

How Trademark Classes Apply and Why They Are Important 

The USPTO website states: “Trademark classes are a way for us to organize the goods or services used in applications, assess fees, and aid in searching our database of registered and pending trademarks.” Thus, you can end up with two Deltas and two Doves since they fall into different categories and likely would not cause any confusion among consumers.  

If you are registering a trademark and want to have broader protection, you should consider registering your mark under different classes, though to do so, you’ll have to pay a separate filing fee for each class. 

Understand the Rights to Your Trademark 

If you have questions or concerns about your trademark or if you think your mark is being infringed upon anywhere in the Greater San Francisco Bay Area, contact the Law Offices of David H. Schwartz, INC.  

Attorney David Schwartz will help you determine whether your proposed trademark will infringe upon another mark already in use and will also represent you if someone else is infringing upon your existing mark.