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The Zest

Same Name, Different Industry: Why Delta Flies Planes and Delta Makes Faucets

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Often, yes. A trademark registration doesn't give its owner the word for every purpose. It protects the name for particular goods or services, and against uses that are likely to confuse people about who's behind a product. If what you sell is truly unrelated, the same name can generally coexist. There are two catches: "different industry" is judged more strictly than most people expect, and famous brands get an extra layer of protection that doesn't depend on confusion at all.

Why identical names can coexist

The test for a trademark conflict is likelihood of confusion. It's the standard the USPTO applies to applications under Section 2(d) of the Lanham Act, and the standard the infringement statute applies to use of a registered mark. Both ask whether the use is likely "to cause confusion, or to cause mistake, or to deceive."

Confusion here means confusion about source. The question isn't whether anyone would mix up the products themselves. It's whether a buyer would think they come from, or are connected with, the same company.

When goods are far enough apart, that doesn't happen. The USPTO's own examples of identical marks registered to different owners are Dove for soap and Dove for ice cream bars, and Delta for faucets and Delta for air transportation services. Nobody boarding a flight thinks the airline made the kitchen sink.

The USPTO's examination manual, the TMEP, puts the rule this way: if the goods or services aren't related or marketed so that the same people would encounter them in situations suggesting a common source, then "even if the marks are identical, confusion may not be likely."

Here's where people get tripped up. The goods don't have to be the same, or even competitive, for a conflict to exist. The TMEP says they "need only be related in some manner," or marketed in a way that buyers could assume a common source.

The USPTO's guidance lists ways goods and services can be related: they're similar or competitive, they're used together, they're bought by the same purchasers, they're advertised together, or they're sold by the same maker or dealer. Its examples include T-shirts and hats, banking and mortgage lending, and clothing and online stores that sell clothing. A product and a service can be related to each other.

A few points that follow from this.

Trademark classes don't decide it. The USPTO sorts goods and services into numbered classes for filing purposes. Being in a different class from an existing mark doesn't make you unrelated. The USPTO says goods and services "don't have to be in the same international class to be related." Classes and descriptions are covered in the article on goods and services lists.

There are no automatic rules either way. The TMEP says there's no rule that certain goods are per se related, whether that's food products, clothing, or computer hardware and software. Each comparison depends on evidence about how those goods are actually made, sold and bought.

The closer the names, the less room you have. The TMEP states that "the more similar the marks at issue, the less similar the goods or services need to be" to support a finding of likely confusion. An identical name is the least forgiving case.

The paperwork controls at the USPTO. In an application, relatedness is judged from the goods and services as written in the application and the earlier registration, not from how either business operates in real life. A registration with a broad description covers more ground than the owner's current product line might suggest.

Two cases that show the line

In Coach Services, Inc. v. Triumph Learning LLC, the luxury handbag company opposed applications to register COACH for test-preparation software and workbooks. In 2012, the Federal Circuit affirmed the trademark board's finding that confusion wasn't likely, and sent a separate question about the test-prep company's mark back to the board. It found the goods unrelated and the trade channels different, and it noted the word carries a different meaning in each setting: a carriage on one side, a tutor on the other.

In Shen Manufacturing Co. v. Ritz Hotel Ltd., the Federal Circuit in 2004 rejected a finding of likely confusion between RITZ for cooking classes and RITZ for kitchen textiles. You might guess those two would be related, since both involve kitchens. The court found the evidence didn't support it.

Both cases show that a shared word alone doesn't settle anything. They also show that these disputes are decided on evidence, case by case, and that the owner of the earlier mark may be willing to litigate the question.

The exception: famous marks and dilution

Everything above depends on confusion. Famous marks have a second kind of protection that doesn't.

Under 15 U.S.C. 1125(c), the owner of a famous mark can get an injunction against someone who starts using a mark that's likely to cause dilution, "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." Dilution comes in two forms. Blurring is an association that impairs the famous mark's distinctiveness. Tarnishment is an association that harms its reputation.

This is why "different industry" doesn't work for household names. Selling an unrelated product under a truly famous brand name can be actionable even if no one thinks the famous company made it.

The bar for "famous" is high, though. The statute defines a famous mark as one "widely recognized by the general consuming public of the United States" as a source identifier. Being well known in one field or one region isn't the standard. In the Coach case, the court called fame for dilution purposes "difficult to prove," said a famous mark is one that has become a "household name," and held that Coach hadn't proven that level of fame on the record in that case.

Fame matters on the confusion side too. The TMEP notes that famous marks get a broad scope of protection in the likelihood-of-confusion analysis, so a very strong mark can reach goods further from its core than an ordinary mark would.

The dilution statute also has exclusions, including certain fair uses, news reporting and noncommercial use. Mentioning a brand by name to refer to its real product is a separate issue from adopting it as your own brand, and I cover it in the article on using other brands' names in marketing.

What to look at for your own name

If you're thinking about a name that's registered in another field, these are the facts that matter. What exactly does the existing registration cover, as written? Would the same customers encounter both businesses? Are the products the kind that one company commonly sells under one brand? How unusual is the name? A word that many unrelated businesses already use tends to get narrower protection than an invented one, a point I explain in the article on strong and weak names. And is the existing brand a household name?

None of these produces a guaranteed answer. Relatedness is a judgment made on evidence, and a trademark owner can object even when its position is weak. If that happens, the article on cease-and-desist letters explains what such a letter does and doesn't mean.

If you'd like to talk through a name you're considering, the services page lays out how the search and filing packages work, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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