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[fb]

We have a product who's mark is the same as the product number of another company in the same category. The products are not the same and do not compete, but they are sold to the exact same consumers. The product are actually used together sometimes. Example: Our (junior) line of XYZ brand devices are used on cars, and the other company has a (senior) product called the XYZ-5000 that is also used on cars, and their product somtimes. connects to our product when used on a car.

Our entire line will be the XYZ brand, whereas the other company has only two products with this catalog number. We are in the U.S. looking to expand into a foreign market where they are, and they are in the foreign market with current distribution into the U.S. And we are both mainly online sales.

[JSonnabend]

Answer yourself this question: are consumers likely to be confused between the two brands?  In other words, would consumers likely be confused into believing that the two products (yours and the other company's) come from the same company?  If so, your use likely infringes.

- Jeff

[fb]

I don't think there is any confusion, even though the consumers are the same.

If the sector were automobiles, and we were the Happy Seating Company, it would similar to our line of seat covers being called Very Fluffy Seats, with the abbreviation of VFS. The other company, say McClain's Auto Parts, could also be making many types of auto accessories, and one of them would have the model number of VFS-2000. None of their products would be seat covers, however, because we have the seat cover patent.

So we would have:

VFS brown seat cover, large, by Happy Seating Company
VFS black seat cover, large, by Happy Seating Company
VFS red seat cover, large, by Happy Seating Company
VFS brown seat cover, small, by Happy Seating Company

They would have:

VFS-2000 seat belt, by McClain's Auto Parts
TAC-1230 tachometer, by McClain's Auto Parts
TOP-7000 convertible roof, by McClain's Auto Parts
EAR-3617 speakers, by McClain's Auto Parts

[NJ Patent1]

fb:  I start w/ the presumption that the “mark”, although only a “product number”, appears conspicuously on in conjunction with the product sold by McClain - not a product identifier in a catalog reproduced on the product just for order fulfillment- and is registered in some class.  And with the caveat that patents, not TMs, are my principle practice (but I do them) and I may not be up to speed on current “zone of expansion” jurisprudence.  Subject to these caveats, I can’t give a “vote of confidence” to your conclusion of “no likelihood of confusion”, at least in the scenario of your OP. 

It looks like both parties are in the same business - after market automobile products.  If, following your OP, your product is a miracle buffer to restore shine and the “other” product is a miracle cream to restore shine, IMO a producer of a miracle cream might reasonably enter into the market for a miracle buffer to be used with the miracle cream.  E.g. use my X-100 buffer in connection with my X-100 cream.  Per Jeff’s post, it’s not what you (or I) think, but what a consumer might reasonably conclude wrt origin of the goods. 

Your second fact pattern (seat cover vs. seat belt) is IMO less problematic.  VFS-2000 belts fit Fords, VFS-2001 belts fits Chevys, etc. (who would register so many different marks?).   In this case the # is a catalog identifier - finds the right part for the particular make/model and does not necessarily sugest source, unless ALL catalog #'s begin w/ "VFS" (not in ur fact pattern).  Your VFS seat covers may fit multiple makes and models.  IMO, and just IMO, there is less likelihood of consumer confusion, per Jeff the “touchstone” of TM. 

Question:  I’m a NAPA-like business and catalog my brake pads under ABC123 and advertise that they are replacements for MOPAR XYZ 789.  Is there a problem?  As far as I am aware, I can say; “compare my ABC 123 to MOPAR^(R) 789” w/o infringing the mark MOPAR 789.  Happens all the time at CVS, Walgreens,  Duane Reade, etc. 

[fb]

Good points. I will add:

I start w/ the presumption that the “mark”, although only a “product number”, appears conspicuously on in conjunction with the product sold by McClain - not a product identifier in a catalog reproduced on the product just for order fulfillment- and is registered in some class

Their "VFS" product number does appear on the product itself. But I did a TM search in the US, WIPO/Madrid, CTM/Europe, UK IPO, TMview, China, Australia, Japan and Canada, and found "McClain" had only registered their McClain company name in most of them; there was no sign of "VFS" anywhere in relation to them.

For us, we have been advised to use and attempt the register the spelled-out name ("Very Fluffy Seats"), while just using "TM" on the VFS acronym. Then later, after more use, attempt to register "VFS".

[JSonnabend]

You could ask Intel for their thoughts on this subject.  Remember the "8086", "80286", "386" and "486"?  Next up: "Pentium"?

- Jeff