You will not be able to register the trademark even if it is already registered under a different classification. This area of law is fraught with legal peril. You really need to consult in person with an IP or patent/trademark attorney and not rely on this simple online Q&A forum.
It depends on a lot of facts that we do not have here and you should not post on this public forum. Here is some basic information that I think will be helpful for you.
Trademarks are source identifiers. They are used by companies to distinguish their goods and /or services from goods and / or services of other companies. In the U.S. trademark rights arise from use of a trademark on goods or in connection with services. Rights arising from use in commerce are referred to as “common law” trademark rights. Registration with the federal government (U.S. Patent and Trademark Office) is not required to obtain rights, but it is highly advantageous.
The test of trademark infringement is "likelihood of confusion." In other words, would the use of the mark lead consumers to believe that your goods or services come from the same source as the goods listed in the registration you found. Courts use a series of factors, including similarity of the marks, and similarity of the goods/services (along with several others) to determine likelihood of confusion.
Trademarks rights are not "rights in gross" - which is a term of art in trademark law. What that means is that trademark rights are established by using a mark in commerce only IN CONNECTION WITH THE GOODS OR SERVICES WITH WHICH THE MARK IS USED (unless a mark is famous). That is why DELTA faucets and DELTA airlines can co-exist without likelihood of confusion. One company has established rights to the DELTA mark only as to faucets and related goods while another company has established rights to the DELTA mark only as to airline services. Consumers would not likely think that faucets and airline services emanate from the same source. But don't try to adopt ROLLS-ROYCE for curtains - that mark is so famous that any third party uses on seemingly unrelated goods would still be prohibited under trademark law.
Even though goods are classified in different classes does not mean that they are unrelated. For example, "vinyl windows" are classified in International Class 19 while "installation of windows" is classified in International Class 37. Yet those goods and services are likely related because consumers would likely think that a company that makes vinyl windows also installs them. That is a more obvious example, but there are other goods and services that are related but less obviously so.
Bottom line - you need to speak with your own experienced trademark attorney who can confidentially review all of the facts of your situation, conduct a trademark clearance search to see what marks are out there, make an educated determination of whether the goods/services are related, and provide you with an actual opinion as to whether it is worth your time, money, and energy to adopt the trademark you are considering or whether your proposed mark is a non-starter due to the prior rights of third parties. Use AVVO to help you locate some experienced trademark attorneys. Then consult with a few to find one who you think will be a good match for you.
Best of luck!
This answer is for general information purposes only. This communication does not constitute legal advice, nor does it form an attorney-client relationship.
Short Answer: Perhaps.
You will need to consult with a trademark attorney to determine your rights and options in this regard. If a mark is "famous" then it can't be used for any other product or service even though the goods and services may be completely different. On the other hand, a two identical names or logos may co-exist with respect to different products or services. The test is whether the use of these same or similar marks with respect to different goods or services is likely to cause confusion in the minds of the consumers of the respective goods and products. I advise that you contact a trademark attorney before you take a step in this direction. Good Luck.
Similar marks can co-exist if they are used for different products -- for example, Delta faucets, Delta air lines, and Delta computers. You need a trademark attorney (nearby, or anywhere in the country) to evaluate the potential risks of infringing existing marks, as well as the potential registrability of your mark.
This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.
Asker, the issue is not similarity of the marks or similarity of goods, but rather confusion as to source of the respective goods bearing the respective marks. DELTA Airlines and DELTA faucets, WILSON soccer balls and WILSON meats, PREMIUM saltines and PREMIUM shotgun shells. Each pair involves identical trademarks but are not likely result in confusion of sores because of the very different products involved.
However, however, let's change the facts a little bit and say it is Sony TVs and Sony bicycles. Well, we know SONY makes TVs and CDs, movies and video games, walkmans used by bicyclers and a thousand other products and that there really is NO other Sony. So Sony bicycle will get the bicycle maker sued in a hearbeat and Sony might rightfully quote it's Michael Jackson song and say "Beat It."
Your situation, well, you didn't give us a single fact. Accordingly we don't know if you are more like SONY or more like DELTA. You were smart enough to ask, now be smart enough to take our advice and see an IL-license intellectual property attorney.
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.
There are some pieces of information you are missing, and I think you should definitely seek counsel on this. First, you must realize that there are TWO trademark regimes, the state trademark regime and the federal trademark regime. If your search was done in the federal database, then you need to approach it as a federal trademark matter, but even if you cannot register it federally, you might have power to register it in the state for what basically amounts to a regional registration.
The most important issue is HOW the other party is registered....if they have multiple registrations in categories of goods that are confusingly similar to yours, then you are unlikely to succeed, BUT if there is little to no relation between your goods and their goods, you might have an easy time registering.
Just bear in mind that if you want to make shirts and call them "Chevrolet Shirts," Chevrolet is unlikely to stand by.
Definitely speak to a lawyer on the matter, and give them the facts. The money you save on infringement lawsuits will be worth it.
The potential for your trademark to likely cause customer confusion is an issue of paramount concern in your matter. Courts do not follow a black and white procedure to make this determination, so the facts of the case will play a substantial role in their decision. When it is more likely than not that a reasonable customer will be confused by the existence and use of both marks, then a determination of likely confusion could be anticipated. Important questions you may want to mull over, which double as guides to past court decisions on trademark confusion, prior to embarking down the costly road of an infringement lawsuit, include the following:
1) Are the goods at issue compete against one another?
2) Do the competing trademarks represent related goods and services? (Which a version of the question you presented in this post, since the likelihood of goods and services being found to be related increases with a finding of goods and services being in the same "class".)
3) Do the trademarks look or sound the same?
4) Do the trademarks have similar meaning?
These are a few of the questions that courts consider, so please don't confuse this as an exhaustive list of hurdles to a result of winning a trademark infringement lawsuit. Answers to the aforementioned questions, found to be in your favor, help your cause, but do not provide full immunity from a finding of infringement.
Even still, the determination of customer confusion can be rendered inconsequential when the competing trademark is considered "famous", courtesy of a policy to prevent trademark 'dilution', which receives it bite from a federal statute (15 U.S.C. § 1125) that allows a famous mark holder to prevent others from using the mark in a manner that can effectively diminish its power to identify the trademark's owner's goods or services, even when confusion does not occur or is not likely.
Nonetheless, your case will likely have unique facets, that will require a unique 'likelihood of confusion' analysis, necessitating multiple thorough inquiries, similar to the four above, with no single one being the golden ticket.
DISCLAIMER - This material is for general information purposes only. It should not be regarded as legal advice. Providing this information is not intended to create an attorney-client relationship. You should not act upon this information without seeking professional advice from a licensed attorney in your state that is well-versed in the subject matter at issue.