One of the most common questions that comes up when we are asked to check the availability of and clear a trademark for a client is whether the client’s intended use of their trademark is too close to someone else’s use of their trademark. The clearance job is complicated by the fact that most clients believe that there’s no conflict unless the two trademarks are identical. But in legal terms that’s not the legal test. The real test is whether the two potentially conflicting trademarks are close enough in sight and sound and relatedness of the goods and services to be likely to cause confusion for consumers of the goods and services in question – not identicalness. A recent Patent & Trademark Office (“PTO”) decision in a dispute involving a pet store and a pet hotel illustrates this point.

The owner of the word trademark HAPPY HOUND (without a logo) filed a U.S. trademark application to cover retail pet store services. But the PTO refused registration of that trademark because of the following trademark registration for pet boarding/daycare/hotel services:

Happy Hounds 2

The PTO Examiner in charge of the HAPPY HOUND (wordmark only) application produced evidence that showed that retail pet store services and pet boarding/daycare/hotel services are often offered and advertised under the same trademark. When it came time for the Trademark Trial & Appeal Board (“TTAB”) at the PTO to rule on this issue, the TTAB agreed with the PTO Examiner and refused registration of the HAPPY HOUND word trademark in part because of the similarity of the services: “The evidence shows that retail stores featuring dog and pet supplies, dog day card and dog boarding services may originate from the same source. Not only does this evidence establish a relationship between Applicant’s and Registrant’s services, but it also establishes that the channels of trade overlap. That is, the third-party websites show that Applicant’s and Registrant’s services are advertised and offered to the same consumers at the same time and, therefore, the services at issue move in the same channels of trade”.

Why is this important? Two reasons: (1) Because it shows that the process of clearing the availability of a trademark isn’t quite as simple as most people think it is; and (2) because it reinforces the legal principle that two trademarks don’t have to be identical in order for there to be a conflict if they are close enough in sight and sound and relatedness of the goods and services to be likely to cause confusion for consumers of the goods and services in question. This is turn means that the decision to adopt a new trademark needs to be carefully considered – both in terms of whether or not you will be able to stop third parties from using your trademark, but also in terms of whether or not there is a high likelihood that you will be sued for trademark infringement if you adopt and use the trademark in question.