The case law is clear and settled that international class numbers are “wholly irrelevant” to a likelihood of confusion claim. See, e.g., Jean Patou, Inc. v. Theon, Inc., 29 U.S.P.Q.2d 1771, 1774 (Fed. Cir. 1993). Nevertheless, there is far too much emphasis placed on searching the right international class numbers than on finding goods or services that may be related to the goods or services offered or intended to be offered in connection with a proposed mark. The Nice Classification system is merely a way for Trademark Offices around the world to organize the millions of applications that are filed each year. So why do so many trademark search engines and some manual searchers rely on international class numbers as a way for evaluating potential conflicts between marks?
For one, old habits die-hard. DIY Searchers have been using the International Class System in their evaluations for years and it presents itself as a shortcut to evaluating the relatedness of goods factor. After all, the system does not randomly categorize goods or services together. But that does not mean that all goods in a particular class number are legally related.
To evaluate the relatedness of goods likelihood of confusion factor requires research to determine what goods and services have been found to be legally related to one another. Although DIY Searchers have access to some legal databases for free – TTAB’s e-FOIA page and Justia, it is time consuming to conduct this research. Considering the similarity of the marks and the international classes only is not a thorough trademark search and can result in a costly mistake. As we discussed in a previous post, a legal proceeding can cost $300,000 or more and the cost to rebrand can cost at least $10,000.
BOB provides a thorough search by considering not only the similarity of the marks likelihood of confusion factor, but also relatedness of the goods or services and dilution.