“Trademarked a Word”
Often, there is a misconception that has “trademarked a word”. Federal Trademark Registrations are not granted without identifying particular goods or services used with the mark. And, a second owner can co-exist for the same mark, if the use of the same mark is in association with different goods or services.
The reason for this is that the underlying analysis is whether there is a likelihood of confusion, and the similarity of the actual marks is only one of the many factors. Among other factors, the trademark office will also review, other factors, some of which are the similarity or dissimilarity of and nature of the goods or services; the similarity or dissimilarity of established, likely-to-continue trade channels; the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; the fame of the prior mark (sales, advertising, length of use); the number and nature of similar marks in use on similar goods; the nature and extent of any actual confusion; the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; and the market interface between applicant and the owner of a prior mark. There are additional factors beyond these set forth. These factors are often called the “du Pont factors” which is a reference to the famous trademark case where these factors were first listed.
