The way you've asked the question, there isn't an answer. Using the word "trademark" as a verb is ambiguous at best. One might REGISTER a term as a trademark, and that registration (in the U.S.) might be with the federal government (U.S. Patent & Trademark Office) or with one or more state governments. And, as a first step, one might ADOPT a term as a trademark and begin to use it as one's brand name for particular goods or services. To advance this discussion, I'll guess that you mean the former.
If two different companies independently seek to register the same term for different but related products or services, then, if the system is working properly at the USPTO, the second application should be rejected. Whether or not the goods/services are in the same "class" isn't determinative. Rather the second application should be rejected if there is a "likelihood of confusion" by prospective customers as to the source or sponsorship of the products.
But sometimes a Trademark Examining Attorney at the USPTO will fail to notice the prospective conflict and allow the second application. Oops.
The company with the first application will not necessarily be unable to get such an error corrected, but it will need the assistance of an attorney experienced in trademark practice. Maybe there's still time to file an opposition to the second application. Or if the second application has matured into a granted registration, it might be susceptible to a cancellation proceeding at the USPTO.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com
Q: "Let's say two companies in related but separate industries ... trademark the same name ... "
R: What you mean is that both companies choose to either (1) do business under the same trade name or (2) brand their products or services with the same trademark.
Q: "While I know that any company can be sued for trademark infringement I wanted to know if it can definitely happen in the case i've described above?"
R: Yes. In fact, it's likely in your hypothetical. Forget the "classes" of good and services that the Trademark Office uses to help it with its trademark registration chores -- those classes are irrelevant when considering whether one mark infringes another. Think, instead, about whether the two parties' products or services are "related" to each other in the minds of consumers.
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.
That wording is awkward. The way you "trademark" a name is apply it to products as an indicator of source or origin and sell or distribute the products in commerce or (b) apply for registration of the name as a trademark at the USPTO and follow the registration procedure including putting the name into use in commerce.
I think you are asking if someone else can definitely register a brand name if you already registered it in the same class. It can happen, and does happen. The classes are set up by the USPTO for search purposes and are not determinative as to the question of likelihood of confusion.Likelihood of confusion determination st the USPTO depends on 13 factors called the Dupont factors, of which two are most important - similarly of the mark and similarity of the goods. So, depending on how the USPTO trademark examining attorney (or later a Judge in an infringement or invalidation suit) sees the factors, there might be two separate entities able to REGISTER the same mark in the same class.
The bottom line it's, I suppose YES, it's definitely possible, although rare.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
The company that first began using the trademark can sue the "junior" user if it can established a likelihood of consumer confusion or that the junior user has caused dilution of the brand owned by the senior user. If the two companies compete with each other directly or indirectly for the same customers in the same geographic areas there is a significant likelihood of confusion in a situation like this, which could lead to an action for trademark infringement. Your question seems to include an incorrect assertion---that the business software industry is separate from the web design agency But business software is used in web-design and these are not necessarily separate industries---there is clearly some overlap. Business software is inevitably used in web-design. Given this overlap, there is enhanced likelihood of confusion. The junior user could very easily face a suit for trademark infringement----indeed, the junior user would be wise to change its branding here unless it wants to defend an expensive law suit.
As you can tell by reading through the other answers that have been provided, the test is whether the two trademarks produce a "likelihood of confusion" in the mind of the consumer. Unfortunately, there's a whole lot of law in that seemingly-simple statement. But here are some examples that can help shed a little light on the subject.
Trademarks aren't like laser-beams and rifle bullets, they're more like horseshoes and hand-grenades. Here's the concept expressed another way - close enough is good enough.
For example, two people could use (and register) the exact same trademark on two completely different goods (or services). Alternately, two people could use (and register) two completely different trademarks on the exact same goods. Generally, as the goods or services become more similar one to another, the trademarks used in association with those goods or services need to be less similar. Conversely, as the trademarks become more similar one to another, the goods or services associated with those trademarks need to be less similar in order to avoid creating a likelihood of confusion in the mind of the consuming public. So it kind of slides back and forth.
However, neither of the trademarks and neither of the goods involved need to be identical for there to be infringement - close enough is good enough. Horseshoes and handgrenades. While goods or services that are specified within the same classification indicate that they are somewhat similar one to another, the classification isn't the determinator of a likelihood of confusion. That determination takes into account the totality of the circumstances (the 12 DuPont factors) - horseshoes and handgrenades.
You ask if you can definitely be sued. The answer to your question is easy - without even knowing the facts. If you live in the United States, you can definitely be sued. End of story.
The bigger questions are, what is the likelihood that I will be sued, and what is the likelihood that I would be found to not infringe if I were sued. These questions are highly fact-specific, and require that you sit down with an attorney to resolve. For example, the first question depends heavily upon the nature of the parties who own trademark/goods combinations that are similar to what you intend to use. Are they litigious? The second question requires a careful study of those DuPont factors. Neither of these analyses can be conducted in this forum.