Скачать или смотреть Trademark Case Study: Related Goods -- Coffee and Bread | Dallas Trademark Attorney Angela Langlotz

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Yesterday I had a phone call with a prospective client who owns a startup company. This is an exciting time for him, they are approaching venture capital for funding, and they want to get their ducks in a row and secure their trademark. We discussed the value that I add to the process for my clients, and some ways he could improve his trademark usage ahead of the big unveiling to the venture capital partners.

After we finished our phone call, I did a quick search on his proposed mark GOODWIN (obviously not the real proposed mark; do you really think I’d tell y’all that?) and found various live, cancelled and abandoned marks, including one for coffee. What really got my attention, though, was the one for bread. Yes, bread.

You see, Prospective Client (hereafter, PC) has a coffee startup, and wanted the GOODWIN mark for coffee-related goods, including coffee drinks. And this identical mark for bread meant that he would not get the GOODWIN mark for coffee. Why did that matter? Because under the trademark law, “coffee” and “bread” are “related goods,” so if an existing mark is similar -- it doesn’t even have to be the same -- to a proposed mark, the proposed mark will be refused registration if the goods for the existing mark and the proposed mark are “related.”

So how are coffee and bread “related goods?” This question is always contextual, and always involves the consumer experience. Goods are “related” if they tend to move in the same “stream of commerce” or tend to “emanate from the same source,” meaning the same manufacturer or service provider.
In the case of coffee, just about every coffee shop also sells pastries. In fact Starbucks, the most famous coffee shop on the planet, sells all kinds of stuff at their shops, including coffee mugs, coffee beans, prepared coffee, tea, snacks, gift cards, chocolates, pastries, and baked goods, including breads. I check on the USPTO.gov database to see if Starbucks has registered a trademark for bread or baked goods, and see that they have registered trademark number 3298944 for coffee and “baked goods, namely, muffins, scones, biscuits, cookies, pastries and breads.”

That is all the research I need to do to know that PC’s mark is not going to register, and will be refused for being “confusingly similar” to an existing mark.
The trademark examiner has access to the same information I do; if Starbucks is using its mark on coffee and pastries and breads, then the consumer is used to seeing those marks in the same “stream of commerce” and from the same source. So any mark for bread that is similar to coffee will tend to confuse the consumer, because consumers are accustomed to seeing coffee and breads and baked goods come from the same company.

This is why, before a trademark application is submitted, it’s really important to search the mark, and to know what the search results mean. If PC had gone to a cheap, “we file your mark for $300 place” then he wouldn’t have discover this, because those places do only what is called an “exact match” search. Meaning they do what you could do yourself: They go to the TESS database, type in your mark, and click the “submit” button. If no exact match is returned, then they file your trademark application.

Of course, you’ll find out months later (about four, on the average) when you get a response from the trademark examiner refusing your mark on the grounds that it is “confusingly similar” to an existing mark for related goods. You will have spent money on the filing fee, which is non-refundable. You will have wasted the last four months launching a brand that you now have to abandon. All entirely avoidable, and for an investment that is less than you might think, and certainly less than all the money you’re going to waste if you get it wrong.

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