Trademark Myths: I can register a famous name in a different category

Trademark: Can I register a famous name

Part Two in Our Four-Part Myth-Buster Series

In our last post, we began a four-part series on dispelling common myths about determining whether a business has the right to use the name it has chosen. We started with an example about Starbucks and its famous green lettering and logo to illustrate the concept of confusing similarity. What makes this example unique is that Starbucks also happens to be a famous trademark, which comes with its own added considerations.

For Myth #2, we'll answer a common question about the right to register a famous name in a different category.

Myth 2: I know I can’t register McDonald’s for fast food, but what about a cosmetics line?

I can understand how this is a common misconception. Everyone knows you can’t copy a trademark in the same industry, but what about the right to register a famous name an unrelated category of goods and services?

Normally, two trademarks that are similar can both still be protected as long as the goods and services are not related. However, in the case of famous marks, this isn’t permissible. Once a trademark reaches the level of famous, it retains protection across multiple industries, even if the brand does not extend to them.

This is because of a concept called dilution, which is when one the distinction between one brand and another is lost – essentially one brand weakening the other and making it less valuable. This usually arises in the case of famous marks, because a second brand comes along and uses the same trademark for goods and services that may be of inferior quality, thereby diluting the strength of the original famous trademark.

There are two types of dilution – blurring and tarnishing – but for our purposes, suffice it to say that you probably would be refused registration for applying for marks such as Disney, McDonald’s, Starbucks, and Coca-Cola, to name a few.

Sonia Lakhany is an intellectual property attorney at Lakhany Law, PC. She specializes in trademark and copyright law, teaches and is a frequent speaker and blogger. Sonia is also active on several boards and committees in the Atlanta legal community.

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