A common misconception in trademark law is that getting something trademark protected prevents anyone else from using that trademarked material. This is not accurate, as the goods and services offered are an integral part of any trademark infringement analysis.
Trademark applications require you to specify the goods or the services that you are offering. If an applicant applies for a trademark, like the word “DOVE,” in connection with a good, like “deodorant,” then that Applicant can stop others from using the term “DOVE” or anything confusingly similar with their trademark in connection with similar goods and services. This would include goods that are not similar but are commonly sold together with deodorant (think soap, conditioner, etc.). However, this does not allow the Applicant to enforce the trademark against all other users using the term “DOVE” in connection with unaffiliated goods (like “chocolate”). This is how we have a trademark from “DOVE” deodorants and soaps and a separate trademark registrant for “DOVE” chocolates.
When you start the trademark process your attorney or advisor should help you identify all the goods or services you are offering. An attorney can also help you identify commonly affiliated or related goods or services. Remember to keep these affiliated classes in mind when searching for a new trademark and when enforcing or protecting a trademark you already have. If you have any questions about trademarks, please schedule a free consultation with Iconic Trademarks!
