At first glance, it may seem peculiar that the same trademark office would allow the registration of seemingly very similar trademarks; take “Apple Records” (the Beatles-founded record company) and “Apple Inc.” (the computer company), or the “San Francisco Giants” (they play baseball) and the “New York Giants” (a football team). Each owner of these separate trademarks uses the mark for different goods and services, highlighting the importance of strategic classification for marks that practically lend themselves to case studies about the average consumer’s likelihood of confusion between the marks. On the other side of the coin, the General Court within the EU Court of Justice recently rejected the British online apparel retailer ASOS plc.’s trademark application with respect to “clothing”, finding ASOS and ASSOS (the Swiss biking-apparel brand) too confusingly similar. This, despite little actual confusion amongst consumers as to the source of clothing, and evidence to show the “peaceful coexistence” of the brands in the marketplace.
While choosing a trademark already used in a different class from the one(s) you intend to use it for may be legal, it isn’t the best idea. Costly, lengthy litigation could be the trade-off for a little extra effort in finding a truly unique mark without being descriptive. Polo Ralph Lauren and the United States Polo Association (USPA) have been locked in a never-ending trademark battle since 1984. First it was the “horseman” logo – the companies reached a partial settlement in 2003 in which the USPA was given the right to sell clothes with its logo, however similar, because Ralph Lauren should not be able to “monopolize the sport of polo”. USPA’s trademarks were limited to such things like “clothing for ladies and children”, “outerwear” and “footwear”. Other USPA trademarks later branched out to cover “eyewear”, something the 2003 settlement had not explicitly dealt with, prompting Ralph Lauren’s attorneys to have another go at trial. What seemed like a victory for USPA in 2003 is not looking so promising in 2014: USPA was also prohibited by court order from using its marks on fragrances, which Ralph Lauren has been promoting since the 70’s.
The question is – being that both the USPA and Ralph Lauren use visually similar logos on apparel, would the average consumer be more confused as to the source of a perfume or deodorant if USPA were also allowed to market fragrances using the same trademark? Both companies have been around for decades, and arguably, both have developed unique brand recognition amongst consumers. It’s not the quality, bottling or scent of the fragrance at issue here either – it is the use of a logo on a specific good not included explicitly in its classification that Ralph Lauren is taking advantage of here.
It’s important to note that the trademark classes outlined by the USPTO are entirely artificial, created in part, to streamline the USPTO’s administration of trademark applications. As with most things “trademark”, the issue is whether the goods and services offered as “related” to goods and services already on the market. The San Francisco Giants and New York Giants can coexist because neither team crosses over to the other’s sport. But with the advent of iTunes, Apple Inc. muddied the waters with regard to Apple Records – both pertain to the field of music. Hence all the noise. Much of the legal drama surrounding trademarks can be avoided if the trademark chosen is sufficiently unique enough to distinguish the source of the goods or services. But if you must pick a trademark that closely resembles something already on the market, make sure your classifications are just right – too broad and you increasing your chances of trademark registration rejection, and too narrow, and you’ll increase your chances of find yourself facing off with your own Ralph Lauren.