Yay – a question for a trademark attorney.
I spend many long hours arguing to the PTO that a given mark a client has applied for a registration for is unlikely to be confused with another company’s registered mark.
So that is the key – likelihood of confuson as to the source of goods and services in interstate commerce. Although it offers protection to the companies that use the mark, it actually was intended as protection for consumers from dodgy trade practices.
A lot of factors influence the likelihood of confusion determination – how similar the marks are, how similar the goods are, the channels of trade in which the goods are sold, and the sophistication or lack thereof of the consumer targets of said goods.
As someone noted, it all depends on the goods you are using the mark for. Let’s take an example: the word OCEAN is used in hundreds of trademarks. It’s a very common word. So, lots of people have registered marks with the word OCEAN in them. But the purchaser of OCEAN saline nose drops in unlikely to purchase an OCEAN personal motor watercraft out of confusion. The marks are identical, but the goods couldn’t be more different, they are aimed at different consumers, and are unlikely to be sold in the same places.
Another interesting consideration to allowing registration, though, is the strength of the mark. For example, KODAK means nothing by itself. Therefore, Eastman-Kodaks use of that word for its goods and services is “arbitrary” KODAK means nothing, and therefore has nothing to do with cameras. The same goes for XANAX for a drug for depression – it means nothing by itself, and doesn’t evoke the product. Over time, such a mark develops an extra level of protection. So where lots of folks can use “SKY” for whatever they want to use it for, pretty much noone can use KODAK except Eastman-Kodak. Some years ago, some bicycle maker tried to register KODAK for its bicycles. The court held that even though bicycles were unlikely to be confused with Film, cameras, processing, photo paper, etcetera, the name was so famous and so arbitrary that there would be an assumption that the KODAK bicycle was sold by Eastman-Kodak.
But take a number : Model 486. This is an extremely weak mark – it describes a model or type of thing. (And numbers can be part of a registered trademark - e.g., LEVIS 501 BLUES). The PTO is unlikely to offer a ton of protection to such a weak mark, outside of the class of goods it describes. So as noted above, pretty much anyone could register a mark with 486 in it.
Unless the PTO rejected such as purely descriptive (say, for a computer model 486). Companies can use marks which are purely descriptive (and put a TM as notice that they think they have rights) but the PTO will often refuse to grant registration for such marks. For example, “Fresh Rolls” would be merely descriptive of fresh bread rolls. But “Fresh Rolls” might be allowed registration for, I dunno, type of roller skates, because in that situation, you’d say that “fresh” referred to a colloquial term meaning good, cool, in, hip, and “rolls” was a quirky way of suggesting how the product worked, and together, it was suggestive and not descriptive as used for roller skates.
Boy, sorry, that was more than you asked.
Ooh, I love your magazine. My favorite section is `How to increase your word power’. That thing is really, really… really… good. – Homer, ``Mr. Lisa Goes to Washington’’