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 because it is perceived 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 or services categorized in a particular International Class number are legally related. 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 be least $10,000
To properly 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.
Not only is it time consuming to conduct this research, but it is also time consuming to incorporate the results from the research in a search equation. For example, the Trademark Trial and Appeal Board has found “restaurant services” to be related to over 100 different goods or services. It would take days to incorporate these different goods and services in the trademark searcher’s search equation. A software application though can include this necessary research at lightning speed, which gives the searcher more time to dedicate to other important naming tasks.
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