The branding process necessarily requires you to choose the kinds of products and services for which you want the trademark to be registered. This leads to a fairly obvious question. If you choose a class that is different from an already registered trademark, does that mean you don’t have to worry about any infringement claims?
What are we talking about here? Well, the PTO divides the grades into 45 categories in total called classes. One class is for chemicals, while another is for clothing, etc. The classes are really designed to try and bring some form or organization into the trademark database.
When considering infringement issues, the first thing to understand is that anyone can go to court and file a lawsuit. They can even use a form and pay a few hundred dollars to do it. Note that I am not saying that they will prevail in your claim. Even if it is completely silly, however, you will have to spend a good amount of money defending it. That alone should be a factor in your evaluation. If you spend $ 100,000 “winning” a lawsuit, have you really won?
So, let’s get to the nitty-gritty of this thing. If I register a similar mark in a different class than the previously filed mark, will I be immune from the infringement? The answer, as with much of life, is … it depends. What we can clearly say is that applying in a different class does not automatically protect you from a claim of infringement. Let’s take a closer look.
The question at hand is the strength of the brand in question. Let’s say I want to register a trademark for Cheezy Wheels, a pizza that I’m going to make and sell across the country. I make a trademark and find that there is already a trademark, but in a classification for toys, since the product is a model of cars for children to play. Am I going to be sued for a violation? Probably not. The toy brand is not particularly strong and my brand does not cause confusion for consumers.
Now let’s look at a different situation. Amazon.com is obviously a very well known brand. What happens if I try to open Amazon Smart Phones and register it? Will they sue me? Probably. Will I lose the lawsuit? Maybe. The problem is that Amazon is a very strong brand and well known to the public. If I start selling Amazon smartphones, many consumers are going to assume that Amazon.com is selling the product. In short, there will be confusion among consumers and that means that you will most likely lose demand even if the smartphones belong to a different class than the Amazon website.
As a very general guide, classes divide notes. It is vital that this does not always mean that you cannot be nailed for infringing another brand.