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When USPTO considers whether a trademark is 'confusingly similar' does it help if one is a product and one is a service?

Alexandria, VA |

I am considering naming a new local dog service business (offering day-boarding, agility training) using a word that is already trademarked by a national company producing dog toys. Even though both relate to dogs, will the USPTO not consider this 'confusingly similar' since one is a product and one is a service? Also, does it help that I am using this word in combination with a second word 'Dogs' to create what I hope will be a trademarkable phrase?

Attorney Answers 4


  1. Yes, it helps that you're offering services and the other company is offering products. But not a lot. And the "likelihood of confusion" analysis cannot be done in the abstract so no one via this forum can provide you with actionable advice.

    Choosing the name for your company is, as you know, a very significant business decision that can literally make or break your business [from both a marketing perspective and a legal perspective]. So do it right. Hire a local trademark attorney to conduct a trademark search for the name you want to use [and all confusingly similar variants], to evaluate the results and to provide you with a "clearance opinion." I stongly suspect that in addition to the mark used by the "national company" your own attorney will discover that other companies are using other potentially, confusingly similar variants as well. Good luck.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  2. It is one consideration.

    The answer provided is for general information purposes and cannot be relied upon. In order to provide legal advice, one must engage with a live attorney; this answer does not create such attorney-client relationship.


  3. It may. The USPTO separates products and services by categories, called "classes." You can find a list of USPTO classes and their general descriptions.

    This is not a legal advice or solicitation, and does not create an attorney-client relationship. Consult with an attorney. I work for Cardinal Risk Mangement and Cardinal Intellectual Property, IP service companies, but not law firms. I also am the president of Vepachedu Educational Foundation Inc., which is a non profit educational foundation. I also write cultural and scientific compliations for the foundation. I also teach at Northwestern university as a guest lecturer. I also provide some pro-bono guidance on immigration and other issues through Indian American Bar Association. I also have a contract with Cardinal Law Group, a law firm, for IP projects. All this information is on my profile at Avvo and also at Linkedin. Any views/opinions expressed in any context are my personal views in individual capacity only, and do not represent the views and opinions of any firm, client, or anyone else, and is not sponsored or endorsed by them in any way.


  4. Here's about 13 different criteria to consider when deciding if your proposed mark is available and comparing it to other marks found in your clearance search.

    (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
    (3) The similarity or dissimilarity of established, likely-to-continue trade channels.
    (4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
    (5) The fame of the prior mark (sales, advertising, length of use).
    (6) The number and nature of similar marks in use on similar goods.
    (7) The nature and extent of any actual confusion.
    (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
    (9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
    (10) The market interface between applicant and the owner of a prior mark:
    (a) a mere “consent” to register or use.
    (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
    (c) assignment of mark, application, registration and good will of the related business.
    (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
    (11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
    (12) The extent of potential confusion, i.e., whether de minimis or substantial.
    (13) Any other established fact probative of the effect of use.

    Based upon this, try to determine if your dog service is sufficiently related to dog goods that could be offered with the same or similar mark. If this is too complicated for you to determine, then you should hire a trademark lawyer to help you and you will appreciate the value of their service, especially if they are correct in assessing your risks for adopting a particular mark and they save you from wasting a significant amount of money that would be lost if pursuing the wrong mark.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.

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