Can I Trademark a Name if Someone Else is Using it?
Picture this: you have a great idea for a new business, everything is coming together in your
mind except for one thing: the NAME of your business! Let’s say you’re driving and at a
stoplight you see a storefront with a name that would have been perfect for your new business.
You’re probably thinking, “shoot, I wish I had thought of this sooner,” but, what you should be asking yourself is, “can I still use this name, and trademark it, even though that company is already using it?”
Well, whether or not you can depends on multiple factors. Let’s dive in!
The short of it is, you can’t trademark a name if the other business is in the same industry as
you, unless you started out using that name beforehand, and can prove you’ve been in business longer!
Our advice for this? Keep all legal documents from even before your business gets off
the ground. Even if the competitor has registered the trademark, you still have options, including petitions to cancel their registration. Some grounds to petition the United States Patent and Trademark Office to cancel a trademark are:
Non-use/abandonment by the registrant/owner
You starting using the trademark before them (and can prove it)
They committed some form of fraud or deception on the USPTO to obtain registration
Make sure to speak with an experienced trademark attorney to evaluate this option before jumping in, as these endeavors can be fairly complex.
That being said, there are some instances where you and another business share a trademark and can actually co-exist and both register a trademark. If they are not in the same or similar industry as you, there is no likelihood of consumer confusion and so you can both register the same trademark in your respective industries! For example, you can absolutely have a social media agency called Bloom, even if a Bloom Flower Shop exists and holds a registered trademark for that name. As long as there is a visible distinctiveness between your industry and that of the other company, you can both use and register the trademark.
Long story short, you can trademark a name if someone else is using it, but you’ll have to dig a little deeper before you jump in. Trademarks are an extremely valuable part of your brand equity. And brand equity isn't something to take lightly. If you would like to discuss your options concerning trademark registration and protection, the attorneys at The Reel Law Firm PLLC are ready to help. Schedule your initial strategy session and let's Button Up Your Brand.