The case law is clear and settled that classification “is 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 Classes than on finding goods or services that may be related to the goods or services intended to be offered in connection with a proposed mark. The Nice Classification system is merely a way for Trademark Offices to organize the thousands of applications that are filed each year. So why is the system relied on 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 factor requires legal 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. In commenting on the recent settlement with Gorilla Glue Co., Ross Johnson, founder of GG Strains, said the lawsuit and rebranding efforts costs the company $250,000.
BOB provides a thorough search by considering not only the similarity of the marks factor, but also relatedness of the goods or services and dilution.