How to Trademark Your Brand for Different Products

You have a successful brand of apparel that is trademarked with the United States Patent and Trademark Office (USPTO). You want to expand your business and launch a line of cosmetics under the same brand name. Can you use your existing trademark for your new products? The answer is not so simple. In this blog, we will explain the factors that affect your ability to trademark your brand for different products, and what steps you need to take to protect your intellectual property rights.

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You have a successful brand of apparel that is trademarked with the United States Patent and Trademark Office (USPTO). You want to expand your business and launch a line of cosmetics under the same brand name. Can you use your existing trademark for your new products? The answer is not so simple. In this blog, we will explain the factors that affect your ability to trademark your brand for different products, and what steps you need to take to protect your intellectual property rights.

What is a trademark?

A trademark is a word, name, symbol, or design that identifies and distinguishes the source of the goods or services of one party from those of others. A trademark can also be a combination of these elements, such as a logo or a slogan. A trademark gives you the exclusive right to use your mark in commerce for the goods or services that you offer, and to prevent others from using confusingly similar marks for related goods or services.

What are related goods or services?

One of the most important factors in determining whether you can use your existing trademark for different products is the relatedness of the goods or services. The USPTO examines every application for federal registration of a trademark for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party.

Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion. However, some of the factors that are considered are:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

  • The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

  • 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.

  • The fame of the prior mark (sales, advertising, length of use).

  • The number and nature of similar marks in use on similar goods.

  • The nature and extent of any actual confusion.

  • The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

  • The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).

  • The market interface between applicant and the owner of a prior mark:

    • a mere “consent” to register or use.

    • agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party.

    • assignment of mark, application, registration and good will of the related business.

    • laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

  • The extent to which applicant has a right to exclude others from use of its mark on its goods.

  • The extent of potential confusion, i.e., whether de minimis or substantial.

  • Any other established fact probative of the effect of use.

To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.

For example, clothing and cosmetics are generally considered related goods because they are both personal care products that may be sold in the same stores or under the same brand name. Therefore, if you have a trademark for apparel and want to use it for cosmetics, you may face a likelihood of confusion refusal if there is already another registered trademark that is similar to yours for cosmetics.

How to trademark your brand for different products?

If you want to use your existing trademark for different products, you have two options:

  • File a new application for each additional class of goods or services that you want to cover with your trademark. A class is a broad category that groups together similar types of goods or services. There are 45 classes in total: 34 for goods and 11 for services. For example, clothing falls under class 25, while cosmetics fall under class 3. You can search for the appropriate class for your goods or services using the Trademark Identification (ID) Manual. You will have to pay a filing fee for each class that you apply for. The fee depends on the type of application form that you use: TEAS Plus ($250 per class) or TEAS Standard ($350 per class). You will also have to meet all the requirements for each class, such as providing a specimen of use, a description of the goods or services, and any additional statements. You can file a new application using the Trademark Electronic Application System (TEAS).

  • File a new application based on a foreign registration or an international registration under the Madrid Protocol, if you have one. The Madrid Protocol is an international treaty that allows you to register your trademark in multiple countries through a single application. If you have a foreign registration or an international registration that covers your trademark for different products, you can use it as a basis for your U.S. application. You will still have to pay a filing fee for each class that you apply for, and meet all the requirements for each class. 

What are the benefits of trademarking your brand for different products?

Trademarking your brand for different products can have several benefits, such as:

  • Protecting your brand identity and reputation across different markets and industries.

  • Preventing competitors from using similar marks for related goods or services that could confuse consumers or dilute your brand value.

  • Expanding your customer base and increasing your sales and profits.

  • Enhancing your brand recognition and loyalty among consumers.

  • Securing your exclusive rights to use your mark in commerce for the goods or services that you offer.

  • Enforcing your trademark rights against infringers and counterfeiters.

What are the challenges of trademarking your brand for different products?

Trademarking your brand for different products can also pose some challenges, such as:

  • Conducting a comprehensive trademark search to make sure that your mark is not already registered or used by someone else for similar or related goods or services. 

  • Filing a new application for each additional class of goods or services that you want to cover with your trademark, and paying the corresponding fees. 

  • Meeting all the requirements for each class of goods or services, such as providing a specimen of use, a description of the goods or services, and any additional statements. 

  • Responding to any office actions or oppositions that may arise during the examination or publication process.

  • Maintaining and renewing your trademark registration for each class of goods or services every 10 years.

Conclusion

Trademarking your brand for different products is not impossible, but it requires careful planning and execution. You need to consider the relatedness of the goods or services, conduct a thorough trademark search, file a new application for each additional class of goods or services, and comply with all the requirements and procedures. By doing so, you can protect your brand identity and reputation across different markets and industries, and enjoy the benefits of having a strong and distinctive trademark.

If you need professional assistance with trademarking your brand for different products, we are happy to assist you. We are a trademark law firm that specializes in helping clients with their trademark needs. Contact us today to get started on your trademark journey.