Can You Trademark a Name That Is Already In Use?

When starting a new business or launching a product, choosing the perfect name is exciting—but what if the name you want is already in use?

It’s a common concern for entrepreneurs: Can you trademark a name that is already in use? The answer is yes and no, depending on several important factors.

Trademarks are all about preventing the risk of consumer confusion, so if the name is being used in a completely different industry, there may still be a way forward.

But if your name is too similar to an existing one in the same market, you could face some challenges. Knowing the rules around trademarking can help you avoid legal matter and protect your brand.

Let’s dive into what you need to know about trademarking a name already in use and how you can navigate the trademarking journey smoothly!

What Is a Trademark?

A trademark is a symbol, word, phrase, logo, or any combination of these to distinguish the goods or services of one company from another.

It is the brand’s signature that allows the consumer to know who the originator of the product or service is and confidently know its quality.

Trademarks are one of the most vital building blocks of brand identity, offering the potential to legally stop competitors from using similar branding that can confuse the customer.

Once a mark is registered under trademark law, an organisation has exclusive rights to utilise such a mark in association with the goods or services the mark represents. This means that no one in the same industry can use a similar name or logo without legal implications.

Trademarking options can cover various elements such as company names, company taglines, business logos, or even specific designs and packaging.

Trademarks don’t just protect companies—they also protect by reducing the likelihood of confusion among consumers in the marketplace.

For example, whenever one sees that specific swoosh logo, they know it is Nike. That trademark assures that one is purchasing from a brand they trust.

It’s important to note that trademarks only apply within a specific sector. For instance, a trademarked name in the technology sector might still be available for use in the hospitality industry.

Also, trademarks must be updated so often to maintain their legal protection, which can last forever as long as they are used in business.

A trademark is a powerful tool for safeguarding your brand’s identity and ensuring long-term market success.

What is the Purpose of Trademarking?

Trademarking primarily aims to protect a brand’s identity and distinguish it from market competitors. A business that gets a trademark is the only one that can use a certain name, logo, slogan, or design with its goods or services.

The trademark protection prevents others from using similar branding, which could confuse consumers. Trademarking plays a vital role in establishing and maintaining brand recognition. When they see a well-known logo or name, people automatically think of a specific company.

For example, the Apple logo immediately signals innovation and premium technology, while McDonald’s golden arches are synonymous with fast food. A registered trademark ensures that no other business can capitalise on that established identity.

Another key purpose of trademarking is consumer protection. Trademarks help customers identify the source of goods or services and make informed purchasing decisions.

There would be so many copycat products on the market without trademarks that it would be hard for customers to tell which companies they can trust.

Trademarking also helps business owners safeguard their investments in marketing and product development. A trademark creates legal leverage, allowing companies to take action against competitors who attempt to imitate their branding or cause confusion among consumers in the market.

Trademarking aims to protect a company’s reputation, support consumer confidence, and ensure that the business can grow and thrive with a clear, recognisable identity in the marketplace.

What Are the Types of Trademarks?

There are different kinds of trademarks, and each one protects certain aspects of a brand’s identity. Businesses can choose the right trademark protection for their brand features if they know about these categories.

Product Trademarks

These are the most common trademarks and are used to identify the source of specific products. For example, the name “Nike” or the swoosh logo both serve as product trademarks, letting consumers know that the product comes from Nike.

Service Trademarks

These distinguish services rather than physical products. Businesses that provide services—like legal firms, consulting companies, or hotels—use service marks to identify and differentiate their offerings. An example would be the “FedEx” logo, which represents shipping services.

Collective Trademarks

Groups use these to show that a product or service comes from a certain person in the group. For instance, the title “CPA” (Certified Public Accountant) can be a collective trademark that shows someone is a member of a professional body.

Certification Trademarks

Certification marks show that a product or service meets certain standards or has been tested for quality. Examples include the “USDA Organic” label for food products or “Energy Star” for electronics.

Trade Dress

This form of trademark protection covers the visual appearance of a product or its packaging, such as the shape of a Coca-Cola bottle or the layout of a retail store like Apple.

Can You Trademark a Name That Is Already in Use?

Trademarking an already-used name is usually quite complex; however, it is possible under certain conditions. Trademarks are separated according to industries; therefore, different companies could trademark a name in various industries.

For example, Delta is both an airline and a faucet company. They can coexist because they serve very different markets with little chance of consumer confusion.

The key factor in determining whether you can trademark a name that’s already in use is the likelihood of confusion.

If the name you want to trademark is similar to an existing one in the same industry or market, it could confuse consumers about the source of the product or service.

Your trademark application is likely to be rejected in this case. You might still be able to get the name, though, if it’s already being used in a completely different field.

Additionally, the first use principle comes into play. If the name is already in use and registered as a trademark, the original owner has stronger rights, especially if they’ve been using it in commerce.

Even if the name isn’t registered, the first company to use it in its respective business may have common law rights that protect it from future claims.

In some cases, you might be able to negotiate with the current trademark holder or consider modifying your name slightly to avoid conflicts.

Consulting a trademark attorney for legal advice on matters is highly recommended to navigate these nuances and ensure a smooth application process.

Exceptions to the Rule

While trademark laws generally prevent the registration of names already in use, there are notable exceptions to this rule. These exceptions allow for certain circumstances where a name can still be trademarked despite its existing use by another party.

Different Industries

One of the most common exceptions is when the existing trademark is in an unrelated industry. Trademarks are sector-specific, so a company selling software could trademark a name already in use by a clothing brand.

As long as there’s no likelihood of confusion for consumers, the name may be allowed in a completely different field.

Geographic Location

If the existing trademark is only protected regionally or nationally, a business operating in a different country or region might still be able to use the same name.

In cases of territorial limitations, a local brand’s rights may not extend globally, opening the door for others to use the name in other locations.

First Use in Commerce

If the current holder hasn’t registered the name as a trademark, they may only have common law rights based on where they’ve used it.

A new business operating in a different location or with national reach may still be able to trademark it if they can prove first use in broader commerce.

Consent or Coexistence Agreement

Sometimes, companies can negotiate with the existing trademark holder to secure a name. This could involve a coexistence agreement that sets boundaries on how and where each party uses the name.

Examples of Similar Trademarks in Different Fields

There are many examples of trademarks that share the same name but exist in completely different industries, which is allowed as long as there is no likelihood of consumer confusion.

These examples show how trademarks can be shared across sectors when they represent different products or services.

Delta

One of the most famous examples is “Delta,” which is both a major Delta airline and a well-known manufacturer of Delta faucets and other plumbing fixtures.

Since the airline industry and the home improvement sector are completely unrelated, both companies are able to use the same name without causing confusion.

Apple

Another classic example is “Apple.” While most people associate the name with Apple Inc., the tech giant, there’s also an Apple Corps, a music company founded by The Beatles.

Because the fields of technology and music production are distinct enough, both companies can coexist with the same trademark.

Dove

The brand name “Dove” is shared by two very different companies—Dove, the personal care brand known for soaps and lotions, and Dove Chocolate, which produces premium chocolates.

Because these products fall into different categories (cosmetics and food), consumers are unlikely to confuse them, allowing both to operate under the same name.

As long as there is a clear distinction between industries or markets, multiple companies can legally share the same name without infringing on each other’s trademark rights.

How Do You Check If a Name is Already Trademarked?

Before using or attempting to trademark a name, it’s essential to check if the name is already trademarked.

Doing so helps avoid legal disputes and ensures that your brand is unique. Here’s how you can check if a name is already trademarked:

Search the U.S. Patent and Trademark Office (USPTO) Database

The USPTO maintains a free, publicly accessible database called the Trademark Electronic Search System (TESS). By searching this database, you can find any existing trademarks registered in the United States. You can search by keyword, logo design, or owner name.

It’s important to look for both exact matches and similar variations, as a closely related name might also cause a trademark conflict.

International Trademark Databases

If you plan to operate internationally, you’ll need to search beyond the U.S. database.

Many countries have their own online Trademark databases, like the European Union Intellectual Property Office (EUIPO) or World Intellectual Property Organisation (WIPO). These online trademark databases can be accessed to check for existing trademarks in other regions.

Professional Trademark Search Services

If your search is more complex or you want to ensure a thorough review, consider hiring a trademark attorney or using professional search services. These services provide a more in-depth analysis, searching for names across multiple countries, industries, and databases to identify potential conflicts.

Common Law Trademarks

Finally, even if a name is not registered, it could still be in use and protected under common law. Checking online search engines, social media, and business directories can help identify unregistered but actively used names.

How Do You Trademark a Name That Is Already In Use?

Trademarking a name that is already in use can be a complex process, but it’s possible under specific circumstances. Here’s a guide on how to proceed on trademarking scenarios:

Assess Trademark Use and Registration

First, determine if the existing trademark is registered with the United States Patent and Trademark Office (USPTO) or relevant jurisdiction. Trademarks are issued in specific classes of goods or services, so if the name is in use within a different class, you may still be able to trademark it in your industry.

Geographical Limitations

Trademarks offer protection within certain geographical markets. If the name is being used only regionally, and you plan to use it nationally or internationally, you may be able to register the trademark, depending on the circumstances.

Differentiate Your Brand

Even if the name is in use, you can explore modifying it to create a distinct variation that won’t cause confusion with the existing brand. This could involve adding additional words, changing the visual appearance of the name, or using it in a different market or context.

Prior Use Defense

If you have been using the name in commerce before the current owner’s registration, you may claim prior use rights. In such cases, you can contest the registration or negotiate coexistence agreements.

Consult a Trademark Attorney

Given the complexities of trademark law, it’s advisable to consult an attorney with trademark expertise. They can guide you through the process, helping assess the likelihood of success and avoiding costly legal disputes.

Enforceable trademark protection for a name already in use requires careful analysis of the name’s current usage, industry, and potential differentiation.

Factors That Affect Trademark Approval

Several key factors can influence the approval of a trademark process. Knowing these factors can help you navigate the process more effectively and increase your chances of securing your desired trademark.

Distinctiveness

The more distinctive marks are, the easier it is to get approved. Trademarks fall into categories from least to most distinctive: generic, descriptive, suggestive, arbitrary, and fanciful.

Generic terms, like “computer” for a tech product, are not protectable. Descriptive marks may require proof of secondary meaning, while suggestive, arbitrary, and fanciful marks are typically easier to trademark.

Likelihood of Confusion

The trademark office assesses whether your proposed mark is likely to cause confusion with existing trademarks. If there are similar trademarks in the same industry, your application is likely to be rejected. Conducting thorough searches before applying can help avoid this issue.

Goods or Services

The application must clearly define the goods or services associated with the trademark. If the description is vague or overly broad, it may lead to rejection. Ensure that your application specifies the exact nature of the products or services.

Geographic Factors

If the trademark is used in a limited geographic area, its approval might be affected if a similar mark has nationwide recognition. Conversely, if you can prove significant local use, it may enhance your chances of approval.

Compliance with Trademark Laws

Finally, your application must comply with all legal requirements and regulations set by the trademark office. Incomplete applications or those that do not follow proper procedures are more likely to face delays or denials.

How Trademark Disputes Are Resolved?

Trademark disputes can arise when two parties claim rights to the same or similar trademarks, leading to potential confusion in the marketplace. Resolving these disputes involves several methods, each suited to the specific circumstances of the case.

Negotiation

Often, the first step in resolving a trademark dispute is direct negotiation between the parties.

They may engage in discussions to reach a mutual agreement, which could involve coexisting peacefully, altering one party’s branding, or agreeing to a licensing arrangement. This approach is usually the quickest and most cost-effective way to settle the dispute.

Mediation

If negotiation fails, parties may opt for mediation. This involves a neutral third party who facilitates discussions and helps both sides find a compromise. Mediation can preserve relationships and is generally less formal than arbitration or litigation.

Arbitration

If mediation doesn’t resolve the trademark issue, arbitration may be pursued. In arbitration, a neutral arbitrator makes a binding decision after hearing arguments from both parties. This process is typically faster and less expensive than going to court, while still providing a definitive resolution.

Litigation

If all else fails, parties may resort to litigation. This formal legal process involves filing a lawsuit in a court, where a judge or jury will make a ruling. Litigation can be lengthy and costly, but it may be necessary if one party seeks significant damages or injunctive relief.

Opposition Proceedings

For trademarks that are still in the registration phase, a party may file an opposition with the trademark office to challenge the application. This is a formal process that can lead to a hearing.

What’s Next?

You can potentially trademark a name that is already in use, but it largely depends on the industry context and the likelihood of consumer confusion.

If the existing trademark operates in a different sector, you may be able to secure the name. However, you might face challenges if it’s in the same field.

Modifying the name, negotiating with the current trademark holder, or choosing a new name altogether are viable options.

Consulting a trademark attorney can help navigate this complex landscape, ensuring that you make informed decisions while protecting your brand identity.

Bytescare offers comprehensive digital piracy monitoring, actively scanning the web for unauthorised use of your content.

We swiftly initiate takedowns to protect your digital rights and ensure your creative works remain secure. Contact us today for peace of mind!

FAQs