Can You Use a Trademarked Name?

When you start a new business or launch a product, choosing the perfect name can be both exciting and stressful.

The name you pick becomes your brand’s identity, something that helps you stand out in the market. However, in this quest for the perfect name, you might find yourself drawn to a catchy or memorable name that—oops—is already trademarked.

So, the question is, can you use a trademarked name?

The short answer is “No, you shouldn’t”—but it’s more complicated than that. In some cases, you might be able to use a trademarked name under specific conditions or exceptions.

To make sense of it all, let’s take a look into what trademarks are, how they work, and what you should know before you step on any legal toes.

What is a Trademark?

A trademark is a legally registered word, phrase, symbol, or design that identifies and distinguishes the source of goods or services. It acts as a company’s signature, offering brand protection by preventing others from using similar identifiers that may cause confusion among consumers.

Examples of well-known trademarked names include Apple, Coca-Cola, and Nike.

Trademarks are typically granted by national authorities, such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO). Once registered, the holder of a trademark gains exclusive rights to use that mark in connection with specific goods or services.

Why Do Trademarks Exist?

Trademarks exist for two main reasons:

1. To Protect the Business: Imagine you build a brand with years of hard work and create a recognisable name like “Coca-Cola.” Now, what if someone else starts selling “Koka-Kola” to trick your customers? Trademarks help businesses prevent others from piggybacking off their reputation and goodwill.
2. To Protect Consumers: Trademarks also help customers distinguish between brands. They ensure that when someone buys an Apple iPhone, they’re not mistakenly getting a knockoff like “Applet iFone.”

Trademarks can be valuable, and that’s why businesses are very protective of them. If you decide to use a trademarked name without permission, you could face serious consequences.

Can You Use a Trademarked Name?

Using a trademarked name without permission can lead to legal consequences, but there are specific situations where it may be allowed.

Trademark law aims to protect brand identity while also ensuring fair use for non-commercial and informative purposes.

When Can You Use a Trademarked Name?

Let’s get one thing clear: using a trademarked name without permission is generally not a good idea. However, there are exceptions and situations where you may be allowed to use a trademarked name.

Here are some scenarios where using a trademarked name could be permissible:

Fair Use

Fair use is one of the most common exceptions to trademark infringement. It allows you to use a trademarked name under certain conditions, such as:

Nominative Fair Use

Nominative fair use occurs when a trademarked name is used to refer to the actual product or brand without implying endorsement or affiliation. It is applicable when:

• There is no reasonable alternative to describe the product.
• The use is limited to the extent necessary to identify the product or brand.
• The usage does not imply sponsorship or endorsement.

Example:
A car review blog discussing the features of the “Tesla Model 3” can use Tesla’s name and logo for descriptive purposes, as long as it’s clear the blog is independent from Tesla.

Descriptive Fair Use

Descriptive fair use allows the use of a trademarked name in its ordinary, non-trademark meaning. This is common when a word serves both as a trademark and as a generic term.

Example:

• A juice company can describe its product as containing “apple” without infringing on Apple Inc.’s trademark, as the word is used in a descriptive, non-branded sense.
• Similarly, a company offering window-cleaning services could use the phrase “clean windows” without infringing on Microsoft’s “Windows” trademark.

Comparative Use

Comparative use refers to instances where a company or individual uses a competitor’s trademark to compare products or services. This type of use is generally allowed under truth-in-advertising laws, as long as the comparison is factual and not misleading.

Example:

• An advertisement stating “Our coffee is more affordable than Starbucks” is allowed as long as the comparison is truthful.
• Comparative product reviews that refer to brand names, such as “Coca-Cola vs. Pepsi,” are another example of legitimate use.

While comparative use is generally permitted, it must be careful to avoid disparagement or creating consumer confusion about endorsements.

Functional Use

Functional use refers to instances where a trademarked name is used because it serves a practical or functional purpose rather than as a source identifier. In these cases, the trademark is used as a necessary part of describing the function or nature of a product or service.

Example:

• A smartphone accessory manufacturer may label a product as “Compatible with iPhone” to indicate that the accessory works with Apple’s devices.
• Similarly, a repair shop may advertise that it offers “Samsung screen replacements” as long as it’s clear that the shop is independent of Samsung.

Note: It is crucial to include disclaimers in such cases, clarifying that there is no official partnership or endorsement from the trademark owner.

Collateral Use

Collateral use occurs when a trademarked name is used incidentally or in a way that is unrelated to the product’s promotion. This type of use typically happens in films, books, or media where the brand name is mentioned in passing, without any direct commercial benefit.

Example:

• A novel in which a character orders a “Coke” at a restaurant uses the trademark as part of storytelling, not for commercial gain.
• A film showing a character using a “Dell laptop” is not considered an infringement, provided the mention is incidental and not used to promote the product.

Collateral use is often protected under freedom of expression laws, especially if the reference adds realism or relevance to the narrative.

Permission from the Trademark Holder

If all else fails, you can always try to ask for permission.

Many companies are willing to license their trademarks to others if there’s a clear benefit or if the usage aligns with their brand. However, this isn’t always guaranteed, especially if your intended use conflicts with the brand’s identity.

Can I Use the Same Trademark for a Different Product?

Using the same trademark as another company depends on several factors, primarily the industry and class under which the original trademark is registered.

Trademarks are granted protection within specific categories of goods or services, meaning that two companies can potentially use identical trademarks if their products are unrelated and unlikely to cause consumer confusion.

Industry-Specific Protection

Trademark protection applies within particular classes. For example, a company producing electronic devices under the name “Lotus” would not conflict with a florist using the same name.

As long as the industries are distinct and consumers are unlikely to associate one product with the other, the use of the same trademark may be allowed.

Exceptions and Risks

• Famous Trademarks: Well-known trademarks (e.g., Apple or Nike) often receive broader protection, even across unrelated industries, to prevent dilution of their brand.
• Likelihood of Confusion: If consumers might believe there is a connection between two products using the same trademark, this could lead to legal action for infringement.

Can I use a trademark that does not have the ® or TM signs?

The absence of ® or TM symbols next to a trademarked name does not mean the trademark is unprotected or free to use.

Trademark protection is determined by registration and use, not the presence of these symbols. Here’s what you need to know:

Registered vs. Unregistered Trademarks

• ®: This symbol indicates that the trademark is officially registered with the relevant authority (e.g., USPTO in the U.S.). Unauthorised use of such trademarks can lead to legal action.
• TM: The TM symbol denotes a claim to a trademark, even if it is not registered. The owner is signaling that they consider the name or logo their property.

What If There Are No Symbols?

Even without TM or ®, the trademark may still be protected. Many companies don’t display these symbols consistently. Trademarks receive legal protection through common law or actual use in commerce, even if they aren’t officially registered.

Risk of Use

Using a trademarked name, regardless of symbol presence, can still result in legal liability if it causes consumer confusion or violates intellectual property rights.

Always conduct a trademark search and, when in doubt, seek permission or legal advice to avoid infringement issues.

What Happens If You Use a Trademarked Name Without Permission?

If you think using a trademarked name is a small legal hiccup, think again. The consequences can range from inconvenient to catastrophic, depending on the situation.

Here’s what can happen if you use a trademarked name without permission:

Cease and Desist Letters

This is often the first step in enforcing a trademark. If a trademark holder believes you’re infringing on their rights, their legal team will send a cease and desist letter. It’s a formal notice demanding that you stop using the trademarked name immediately.

If you receive one of these letters, don’t just ignore it. Failure to comply can lead to more severe consequences, including lawsuits and hefty fines.

Lawsuits and Legal Action

If you continue to use the trademarked name after receiving a cease and desist letter, the trademark holder may take legal action.

Trademark infringement lawsuits can be expensive, time-consuming, and stressful. You could be ordered to pay damages, cover the legal fees of the trademark holder, and even face an injunction to stop using the trademark.

Loss of Business and Reputation

Even if you escape a lawsuit, using a trademarked name can damage your reputation.

Businesses that knowingly or unknowingly infringe on trademarks are often labeled as copycats or unethical. This can harm your brand’s image, resulting in a loss of customers and trust.

How to Avoid Using a Trademarked Name?

Trademarks can be complex to manage. Here are some guidelines to help you avoid unintentionally using a trademarked name:

Conduct a Thorough Trademark Search

Before finalising a name, conduct a comprehensive trademark search using resources like the United States Patent and Trademark Office (USPTO) database. You can also use online tools or hire a trademark attorney to assist with the search.

This process helps you identify existing trademarks that might conflict with your chosen name.

Create a Unique Name

Sometimes, the best solution is to get creative and come up with a unique name. Inventing a word or combining elements from multiple words can help you avoid infringing on existing trademarks.

For example, companies like Google and Kodak invented entirely new words to avoid conflicts and create strong brand identities.

Register Your Own Trademark

Once you’ve settled on a unique name, consider registering it as your own trademark. This gives you legal protection and the exclusive right to use the name within your industry.

Consult a Trademark Attorney

If you’re unsure about the legality of using a particular name, it’s always wise to consult a trademark attorney. They can provide expert advice on whether a name is safe to use or if it’s likely to lead to legal trouble.

How Trademark Classes Apply and Why They Are Important?

Trademark classes are an essential part of trademark law, categorising goods and services into specific groups to streamline registration and protection. These classes, established by the Nice Classification (NCL) system, consist of 45 categories—34 for goods and 11 for services.

How Trademark Classes Work?

When registering a trademark, the applicant must specify the class or classes their product or service falls under. For example:

• Class 25: Clothing, footwear, headgear
• Class 9: Software, electronics
  Each trademark is protected only within the registered class(es), meaning two companies can use identical trademarks for unrelated products—for example, “Lotus” can be both a software company and a yoga studio without conflict.

Why Trademark Classes Are Important?

Clear Scope of Protection: Trademark classes define the industry boundaries within which your trademark is protected, reducing the risk of infringement disputes.

Avoiding Conflicts: Understanding trademark classes helps businesses avoid selecting names that conflict with existing trademarks in the same category.

Strategic Expansion: Companies can register in multiple classes if they plan to expand into new markets or product lines.

Efficient Search and Registration: Trademark databases are organised by class, making it easier to conduct trademark searches and find potential conflicts.

What’s Next?

Using a trademarked name, like “Delta Airlines,” involves navigating legal complexities to avoid triggering an infringement claim. It’s crucial to consider whether your use falls under permissible categories like comparative advertising or operates within different classes of products to avoid a trademark issue.

Misuse could lead to confusion of consumers, especially if the trademarked name is associated with a larger product or industry, such as aviation.

Additionally, using a protectable mark improperly could expose you to legal action or association with counterfeit products—posing significant potential risks to your business.

Secure your brand’s integrity with Bytescare’s comprehensive Brand Protection Solutions. With our brand name scanning and trademark infringement detection, you can proactively defend your brand’s identity and ensure its safety across the digital field. Ready to protect your brand? Contact us today for a secure future.

FAQs