I hand you a box of WILD FLOWER brand gumdrops and a box of WILD FLOWER brand donuts.
Do you think the gumdrops and the donuts came from the same company?
You’re probably thinking something like this:
Candy and donuts are sort of related and it’s not hard to imagine a candy company also selling donuts but, off hand, I can’t think of a company that sells both under the same brand.
Would your answer have been different if I had given you a box of candy and a bag of cement mix? What if I had handed you a box of gumdrops and a box of jelly beans?
You’ve just done an analysis similar to what trademark attorneys do all the time. You considered the “relatedness of the goods and services” to figure out whether trademarks are “confusingly similar.”[1]
- Do the goods/services feel related? Would you find them in the same type of store, like handbags and jewelry? Would you find them in the same department of a store like pants and belts?
- Can you think of a company that sells both under the same brand?
Both of the bulleted question-types are important. Sometimes goods are closely related even if there’s no company that does both. Other times, there can be one brand used for lots of really different stuff: Yamaha Corporation uses the YAMAHA® trademark to sell everything from motorcycles to trumpets and lots of stuff in between.[2]
“Confusingly similar” is both a difficult and complicated concept and pure common sense.
[1] There are a bunch of these question tools. Trademark attorneys call them the “du Pont Factors” because they come from a case involving E. I. du Pont de Nemours & Co. Here are the most important ones:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The relatedness of the goods or services.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
[2] Here’s a partial list of the stuff Yamaha Corporation sells under its YAMAHA brand: Musical instruments, skis and ski bindings, motorcycles, motorboats, eyeglasses, golf clubs, badminton rackets, robots, semiconductors.
The mark consists of a stylized side view of a bee comprised of: a semi-circle outlined in grey, filled with a gradient of color ranging from orange to yellow with three vertical grey lines depicting stripes and a grey circle depicting the eye; emerging from the semi-circle are two curved grey lines depicting the antennae and a small grey triangle depicting the stinger; and above the semicircle are two overlaid blue stylized wings.
