Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Jack Hunter]

that two entities may share the same word mark or marks so long as they are not in the same or competing industries?

Please help!!!

[Isaac]

No law states what you suggest.

The law is that a mark that has a likelihood of causing confusion with a senior mark infringes the senior mark.  The industry in which the marks are used is only one factor in determining whether there is a likelihood of confusion.

Further for famous marks, the industry of use is of essentially no issue at all.   For example you probably cannot use "Microsoft" as a trademark in any industry.

[JSonnabend]

The relevant provision of the Lanham Act, I believe, is § 2, at least to the extent that it generally defines what a trademark is and provides for registration of non-conflicting marks:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it

. . .

Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive

The first part essentially defines what a trademark is, i.e., something by which the goods of a party may be distinguished from others' goods.  The second part says that the PTO won't register a mark if it conflicts with a prior mark, i.e., if the use of the junior mark is likely to cause confusion with the senior mark.  That second part is essentially the test for infringement, as well.

Goods or services that are sufficiently distinct from one another may peacefully co-exist (e.g.: "Delta" for airline services, faucets and power tools; "United" for moving services and airline services; "Burlington" for clothing, transportation and others; etc.).

Finally, I disagree with Isaac on the "Microsoft" example.  Would anyone be confused between the software maker and the manufacturer of sheets and bedding who came out with a "microsoft" line of high thread count, premium quality bedding?  Of course, dilution is another consideration, but that's not immediately relevant here, I believe.

- Jeff

[Isaac]

I would think dilution would be highly relevant relative to an attempt to use Microsoft as a trademark.  Why would it not be a concern (I'm assuming that Microsoft is a  famous mark)?

I do not suggest that there was no context under which Microsoft could be used.   Instead I'm suggesting the distinctions between goods and services are of less important for famous marks because that fact is given little weight in a dilution cause of action.

Edited for clarification, typos...

[JSonnabend]

I meant to say that dilution is not immediately relevant to the OP's question.  It may be, depending on the marks at issue, but it is not immediately apparent that dilution is at all relevant.  

Microsoft is in all likelihood a a famous mark.  How the mess that we call dilution law impacts my hypothetical, I don't know.

- Jeff

[Isaac]

I am not sure what set of facts constitutes your hypothetical.  I'm trying to understand what you are saying happens in particular when the word mark to be shared is "Microsoft".    While I agree that the use of the work mark by the bed sheet manufacturer is probably not confusingly similar,  I don't understand how a using a famous mark would not raise the issue of dilution even when there was no likelihood of confusion.

In trying to resolve the confusion, one possible point seems to hinge on the word "share".   If share means a cooperative sharing, I would agree that dilution is not an issue.   I read "share" to mean two entities using the same mark without cooperation, but in the cooperative case I don't think the quoted portion of the Lanham act is directly.

[JSonnabend]

My hypothetical was a bedding manufacturer using "Microsoft" as a brand without the consent of Microsoft the software manufacturer.  I understand that dilution does not require likelihood of confusion (if it did, it would simply be infringement).  

My point in may later post was that the law of dilution is a mess -- more so than many of the messy tm areas -- and so I'm not sure how a court would rule on a claim of dilution.  

For instance, would a finding that "Microsoft" was suggestive in connection with bedding impact a ruling?  What if it were merely descriptive but acquired secondary meaning?  Is "Microsoft" for microcomputer software inherently distinctive, and how does that affect the dilution claim?

These are the questions I'm not attempting to answer.

- Jeff

[Isaac]

I don't think it is necessary to answer those questions.  Those kinds of things are taken into account when doing a complete dilution analysis.

I guess my only point is that short circuiting the analysis by simply pointing to the difference in industries of use when the marks in question are highly similar or identical may possibly give the wrong answer in an infringement case, but is even more likely to give an off base answer when dilution is relevant, because dilution analysis discounts that factor.

I did overstate the case by saying Microsoft could not be used in any industry.   If I can be allowed to back off of that a bit...