Can You Trademark a Name Someone Else Is Using But Did Not Trademark?

Deciding to trademark a name is crucial for protecting your brand’s identity, but what if you discover someone is already using that name without an official trademark? Are you legally allowed to register it yourself? This question sits at the heart of many trademark disputes and can have significant implications for your brand strategy.

The trademark attorneys at Emerson Thomson Bennett explore whether you can trademark a name someone else is using but hasn’t trademarked, the factors influencing your chances, the risks of trademark infringement, and the steps required to secure your trademark. If you’re navigating the tricky territory of unregistered trademarks, read on to understand your options and protect your business.

Understanding Trademark Rights

A trademark is more than just a name or logo. It acts as a valuable legal shield, differentiating your business’s products or services from others and protecting your brand identity from misuse. Trademarks can include business names, product names, logos, slogans, and even unique sounds or colors tied to your brand.

Why are trademarks important?

• They build customer trust, association, and loyalty.
• They safeguard your reputation and business investments.
• They give you the legal footing to prevent others from profiting from your brand’s success.

Properly securing a trademark not only strengthens your brand but also lowers the risk of costly trademark infringement or trademark disputes in the future.

Prior Use and Common Law Rights

The “First to Use” Principle

Unlike some countries that operate on a “first to file” system, the United States law prioritizes “first to use.” This means actual use of a name in commerce establishes rights, even if the name isn’t federally registered.

Common Law Trademark Rights

If a business or individual uses a name for their goods or services, they can establish what are called common law rights. These rights are automatic from the moment the name is used publicly in commerce and can provide some limited protection, even without a registered trademark.

What determines common law strength?

• Duration of use: The longer a name is used commercially, the stronger the claim.
• Geographic scope: Common law rights are generally limited to the geographical area where the name is used.
• Market presence: How well-known is the name in the relevant market? A strong local following can make a difference.

If someone else is using the name actively, they may have common law trademark rights that could block your registration, even if they never went through the official trademarking process.

Factors Affecting Availability

Before attempting to register a name already in use, consider these crucial factors:

1. Industry and Goods/Services

Trademarks are registered in connection with specific goods or services. If someone is using the name for a bakery and you want to use it for a software company, you may be able to proceed, as long as there is little chance of confusion.

The USPTO will weigh how closely related the two businesses are. Overlapping or closely related services (e.g., two consulting firms) greatly increase the risk of rejection and trademark disputes.

2. Likelihood of Confusion

One of the central tenets in trademark infringement cases is the “likelihood of confusion.” If consumers might mistakenly believe your product/service is affiliated with or sponsored by another business due to similar names, registration will likely be denied.

Indicators of consumer confusion include:

• Similar business offerings
• Identical or highly similar names/logos
• Overlapping customer base or marketing channels

3. Geographic Scope

Common law rights can block federal registration, but are typically local or regional, not nationwide. If the previous user’s reputation is confined to a small area and your business operates elsewhere or is expanding nationally, you may have a path forward.

Keep in mind, even if you secure the trademark federally, you may not be able to use the name in the location where the previous user established their rights.

Legal Services for Trademark Issues

If you anticipate a dispute or you’re unsure about prior use of your desired name, professional legal guidance is essential to avoid costly trademark infringement mistakes.

How ETB Law Can Help

• Trademark Application Assistance: ETB Law’s attorneys guide you through every step, from trademark search to registration, ensuring all potential conflicts are addressed.
• Defending/Enforcing Trademarks: If you suspect your trademarked name is being misused (or are accused of infringement), ETB Law represents clients in disputes, including cybersquatting and typosquatting cases. Our litigation experience and client-first approach provide support and strategic advice tailored to your unique situation.
• Ongoing Counsel: We keep clients involved at every stage of the litigation process, pursuing your rights aggressively for optimal outcomes.

Contact ETB Law’s attorneys to schedule a consultation for legal help.