Is it trademark infringement to use a name registered for a product in an unrelated market?

Question

This is just for my curiosity and education. I see that there is a trademark filed with USPTO for the name Cassandra. There is also a very popular database by the same name. Then is using this name for the latter not a violation?

Does this answer your question? Could I register a trademark already registered for other classes? — OrangeDog, Jan 05 '24 at 00:46

Jen · Accepted Answer · 2024-01-03T20:44:04.467

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The trademark registration you linked to is for use in "women's intimate apparel, namely bras, panties, garters and chemises."

To name a database product "Cassandra" is not likely to cause any confusion with use in the context of women's intimate apparel.

See Trademark Basics: Scope of Protection.

There are even other "Cassandra" marks registered:

one for bean bag dolls
one by Apache Software Foundation for database management software

edited Jan 03 '24 at 20:44

answered Jan 03 '24 at 20:37

Jen

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That's why Disney trademarked "Mickey Mouse" in over 70 fields. Even though it's not copyrighted anymore, you're still going to get C&D letters from them. – Mindwin Remember Monica Jan 04 '24 at 12:44
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Note: the Apache one in your last example is almost certainly the "very popular database" the OP is inquiring about. – Jörg W Mittag Jan 04 '24 at 13:22
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@MindwinRememberMonica Most Mickey Mouse cartoons are still copyrighted. The only thing that entered the public domain was the very first cartoon, Steamboat Willie. – Barmar Jan 04 '24 at 15:17
The character did, too. And that's the most important thing. @Barmar . That the other cartoons are still copyrighted is only ancillary to the main issue. Unless you are using some feature or OTHER characters that appeared in the most recent cartoons, your statement is a red herring. – Mindwin Remember Monica Jan 05 '24 at 13:22
@MindwinRememberMonica But MM's design has changed over time. So versions that are portrayed differently are not PD yet. See this question – Barmar Jan 05 '24 at 15:36
Still a red herring, and I mentioned it in my comment above. I am well aware of that, but for most media venues, the original Steamboat Mickey is enough. Avoiding the modern designs is easy enough. – Mindwin Remember Monica Jan 05 '24 at 16:23

score 10 · Answer 2 · answered Jan 03 '24 at 20:37

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Trademark is limited to a particular class of goods and services, and does not grant complete business ownership of a word. The item of which you speak is for "women's intimate apparel, namely bras, panties, garters and chemises", therefore a software usage does not conflict with that trademark.

answered Jan 03 '24 at 20:37

user6726

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Similarly, Apple Computers won a trademark dispute from Apple Records -- they just had to guarantee that they wouldn't public music. I presume they reached a licensing agreement when they later opened the iTunes Store. – Barmar Jan 04 '24 at 15:20
@Barmar yes but no. The Beatles music was not available on iTunes for many years, for which one of the reasons was a dispute over the Apple name. – Philip Kendall Jan 04 '24 at 17:34
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@PhilipKendall As far as I can tell, that had nothing to do with the name. The article just mentions the name as one of the issues in the history of Beatles vs Apple. – Barmar Jan 04 '24 at 17:49

Is it trademark infringement to use a name registered for a product in an unrelated market?

2 Answers2