Take Home Points: 1. The trademark registration process is not as simple as it seems. Many factors can enter into the calculus and caution should be used when applying for a registered mark where the proposed mark consists of words already in use for the same or overlapping products.
2. A registered trademark is the owner’s brand and a valuable business asset. It is incumbent upon branding professionals to work with their clients on not only developing catchy brands but brands that will be registrable. This is essential to build brand value through trademark registration and to help prevent allegations of trademark infringement. This is where a trademark attorney can provide invaluable advice on the risks of proceeding with a particular brand development scheme before the outlay of a lot of money.
Discussion
A company wanting to protect its brand identity and thereby enhance its valuation generally seeks federal registration of its trademark/service marks which may include names, logos, and slogans. In applying for a mark that is “close” to an already registered mark, applicants sometimes make the mistake that the examining attorney will not find a likelihood of confusion if the applicant’s mark involves a different international classification (IC) of goods/services from the registered mark’s specified IC(s).
This assumption is wrong. Applied-for marks that are deemed by the USPTO’s examining attorney to convey a similar commercial impression with an existing registered mark will often be denied registration even if the two marks do not involve the same international classifications of goods/services. One of the determining factors is whether the specified international classes involve closely related goods/services. Thus, a registered mark for IC class 030 (e.g., pizza as a food product) and an applied-for mark for IC 043 (restaurant services) may be found to involve related goods and services that could result in a likelihood of confusion as to the provider of the pizza food product/restaurant services.
The reason for these rejections is to ensure that consumers are not confused over the sources of the goods/services sold under registered marks. The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.
For example, the consumer who purchases frozen pizza as a food product (e.g., at a grocery store under a registered trademark as its brand name) could “think” that a restaurant having the same or very similar registered mark is also the seller of the store-bought pizza even though the pizza seller and the restaurant owner have no business connection whatsoever. Now, many restaurants do sell food products under the restaurant’s name and obtain relevant registered trademarks for those products to generate a strong trademark portfolio. The problem arises where unrelated entities try to register very similar works for related goods.
A recent decision by the Federal Circuit of Appeals drives home this point. In re R.S. Lipman Brewing Company, LLC, Appeal No. 2023-2131 (April 14, 2025), the court affirmed a Section 2d refusal of the mark word mark CHICKEN SCRATCH for “beer” in view of the identical word mark registered for “restaurant services.” The CAFC affirmed the Trial and Trademark Appeal Board’s conclusion that the examining attorney’s evidence established the relatedness of beer and restaurant services because many restaurants sell beer and other alcoholic beverages. The mark will not be registered.
Lipman Brewing Company (Lipman) also filed an application for a design mark which has a predominant chicken logo presented above the words “Chicken Scratch” in stylized font and also the words “American Pilsner.” The logo is used on beer cans. This mark has, perhaps surprisingly, also been rejected by the examining attorney. This final rejection has not yet been appealed. This final rejection drives home the point that even a logo may not overcome a rejection on likelihood of confusion grounds because trademark law focuses on the words within a design mark. The author personally believes that the logo mark is clearly distinguishable from the word mark used to reject Lipman’s word mark and gives a distinct commercial impression. However, appeals cost money and Lipman may not wish to appeal again. It is noted that 90% of examining attorney rejections are affirmed by the TTAB and CAFC.
Similar to restaurant/food product overlap, IC 025 for clothing is also a class that the USPTO routinely finds overlaps with other IC classes, particularly jewelry (IC 014), purses (IC 018), and eyewear (IC 09). The “clothing” applicant will generally not prevail if the examining attorney can provide evidence that a single third-party entity is likely to offer for sale both clothing and complementary items such as jewelry, purses, or eyewear. For example, in In re Manja Studio SDN BHD (May 17, 2019), the Trademark Trial and Appeal Board (TTAB) affirmed the rejection of the applicant’s mark for clothing, finding that the applied-for mark was likely to cause confusion with an existing similar registered mark for watches. The rejection was affirmed even though that applicant’s mark was for relatively inexpensive “T-shirts, outerwear, and hats” while the registrant’s mark was for “luxury designer watches.” In reaching its conclusion, the TTAB emphasized that watches and clothes are types of goods that a consumer could purchase at the same time so as to coordinate a fashionable ensemble; therefore, the goods are “closely related.”
In sum, trademark law is not as simple it may seem. The development of any brand should proceed with an eye on potential trademark registration problems. This includes conducting a thorough trademark search and not discounting a potentially problematic registered mark where its specified goods/services could be considered overlapping with your own goods/services.
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Susan Dierenfeldt-Troy
