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The USPTO 009 International Class category for trademarks, which covers "recorded and downloadable media, computer software", is where every mobile application seeking trademark protection will at the least register. I hope the USPTO realizes how giant this sector already is and how much more it will grow and allow for robust competition. There are literally millions of apps in circulation with millions more to come. Conversely, there are definitely not millions of chemical companies, for example. Is this a safe assumption given the history of how it treated other similar sectors? For example, if a personal finance app can successfully claim a trademark on "pineapple" (in IC-009), is it safe to assume the USPTO would allow a children's game app to claim the same trademark in IC-009 also?

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For example, if a personal finance app can successfully claim a trademark on "pineapple" (in IC-009), is it safe to assume the USPTO would allow a children's game app to claim the same trademark in IC-009 also?

One word, straight word only trademarks are rare. There might be two trademarks in the same class that contain the word pineapple, but generally speaking, that protection would only be in conjunction with other words or with stylized scripts or a logo, not simply the word standing alone (unless the trademarks all belonged to the same registrant).

You would need to examine each of the trademarks in the class containing that word and determine:

(1) Are they on the principal registry (which provides full presumptive protection) and

(2) What precisely is the protected trademark.

A trademark of "pineapple grove" in blue cursive writing on the supplemental register, is not the same as "pineapple" without any associated words or appearance, in the principal register.

If there are trademarks in the same class with overlapping words or elements, the question is whether they are confusingly similar or identical. If so, and if the earlier one hasn't expired, and if both seek to be on the principal register, the later applicant should be rejected by the USPTO, and could probably be challenged by the prior applicant.

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  • I understand all that but my question is about the app space. If a restaurant claimed the wordmark "XYZ" then I fully understand why other restaurants wouldn't be able to claim XYZ also. However, a paint store can claim XYZ because it doesn't compete with the restaurant and there is very little likelihood of confusion. But both this restaurant and this paint store can have iPhone apps. And there would now be two apps called XYZ which means both the restaurant and the paint store could then claim XYZ in IC-009 (downloadable software). How would this be rectified?
    – acidgate
    Jun 1 at 15:42
  • IC-009 does not work in the app space if registrants can claim wordmarks just for being downloadable software because virtually every company in the world is producing their own software in some capacity. The only reasonable conclusion I can think of is that the USPTO must account for the subcategory of the software, or am I wrong?
    – acidgate
    Jun 1 at 15:45
  • @acidgate Your intuition is mostly wrong. And running out of wordmarks is a genuine concern in many IC categories. Reasonable or not, for the most part, that analysis is not a subcategory type analysis. You can definitely have direct conflict with one mark in one class and another identical mark in another class. But within a class, confusingly similar is your only guide and when in doubt you should assume that exact duplication within a class is not allowed. Basically a mark would often cover a whole line of varied apps of different types within a class (think Microsoft/Apple). Not a science.
    – ohwilleke
    Jun 1 at 18:23
  • So in your estimation, a restaurant named XYZ with a mobile app could not claim IC-009 on XYZ if a paint store named XYZ with a mobile app already claimed XYZ in IC-009 because these apps cannot be broken down into subcategories since they are both downloadable software?
    – acidgate
    Jun 1 at 18:44
  • @acidgate It is analyzed on a case by case fact specific basis, but basically yes. If PeachCo has an "IPeach" mark in Category IC-009 for "downloadable software" with a mark which is the word "iPeach" for an app associated with restaurant coupons, and a paint company markets an "iPeach" app for paint coupons when PeachCo has never had apps for, the PeachCo infringement suit against the paint company's infringing app would still likely win if PeachCo's mark description is broad enough and it was first to file, at a time when the infringer was not using the mark at all.
    – ohwilleke
    Jun 1 at 19:11
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As an example - There are currently 7 live and 23 total "Pineapple" listings in international class 9 so I wouldn't worry too much.

The first is for insurance applications and the second is for education regarding food and drink. The third is for travel magazines.

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  • So you are suggesting that the nature of two competing marks (both registering for the same wordmark) both being downloadable mobile applications doesn't really matter because what matters is their userbase overlap? And this is because a mobile app named X will not be confused with another mobile app named X (both in the same app store on the same platform) so long as their userbases don't have significant overlap (i.e. people house hunting versus people on a dating app).
    – acidgate
    May 30 at 15:08
  • I'm not an expert on trademark law. But important issues include likelihood of confusion among consumers. May 31 at 1:51

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