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The Zest

Can You Trademark a Name Someone Else Already Uses? It Depends on Who, for What, and Since When

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Sometimes. Trademark law doesn't ask whether anyone else on earth uses the name. It asks whether your use of it is likely to confuse people about who's behind the goods or services, and if so, who was there first. If the other business sells something unrelated, you may both be able to use and register the name. If it sells something related and got there before you, you generally can't.

The rule: Section 2(d)

The governing statute is Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d). It bars registration of a mark that so resembles either of two things that it's likely "to cause confusion, or to cause mistake, or to deceive":

  1. "a mark registered in the Patent and Trademark Office," or
  2. "a mark or trade name previously used in the United States by another and not abandoned."

Notice what's in there. Registered marks count. Unregistered marks count. Even trade names count, meaning a name a business operates under, if it was used first and hasn't been abandoned.

Notice also what the test is. It isn't "same name." It's likelihood of confusion, which the USPTO's examination manual, the TMEP, says turns mainly on two things: how similar the marks are and how related the goods or services are. So "already in use" breaks into three questions. Who's using it? For what? Since when?

If the other name is federally registered or pending

This is the situation the USPTO checks for you, after you've paid. When you file, an examining attorney searches the federal database. If a live registration is confusingly similar and covers related goods or services, the application gets a Section 2(d) refusal. An earlier-filed pending application can hold yours up too.

Filing dates carry real weight here. Under 15 U.S.C. 1057(c), once a mark registers on the Principal Register, its application filing date counts as "constructive use," which gives the owner priority that is "nationwide in effect" as of that date. There are exceptions, mainly for someone who was already using the mark before that filing date.

A refusal isn't always the end. One route the TMEP recognizes is a consent agreement, where the registered owner agrees in writing to your registration. Examining attorneys are told to give substantial weight to a detailed agreement explaining why confusion is unlikely, though no agreement is guaranteed to carry the day, and the other owner has no obligation to sign one.

If the other user never registered

Here's something that surprises people: the examining attorney generally won't refuse your application because of an unregistered user. The TMEP says the "previously used" part of Section 2(d) "is not applied in ex parte examination," because examiners have no practical way to find unregistered uses or tell whether they've been abandoned.

That doesn't make the prior user irrelevant. It means the fight, if there is one, happens somewhere else.

A prior user can oppose your application. After the USPTO approves an application, it's published, and anyone who believes they'd be damaged by the registration has thirty days to oppose, with extensions available. Earlier use of a confusingly similar name is one of the grounds Section 2(d) gives them.

A prior user can also petition to cancel a registration after it issues, though time limits apply to some grounds.

And even if your registration stands, it may not reach them. The Lanham Act preserves a defense for someone who adopted a mark without knowledge of the registrant's prior use and has used it continuously since before the registrant's filing date. That defense applies "only for the area in which such continuous prior use is proved." In plain terms, a local business that was there first may be able to keep operating in its territory, and your registration has a hole in it there.

I've written about this situation from both sides in the article on prior users who never registered, so I won't repeat it here.

If they use it for something unrelated, or somewhere else

If the other business sells something unrelated, the name may be open to you. The TMEP says that if the goods or services aren't related or marketed in a way that the same people would encounter them and assume a common source, then "even if the marks are identical, confusion may not be likely."

How related is too related is its own question. I take it up, along with the exception for famous brands, in the article on using the same name in a different industry.

One more wrinkle: the names don't have to match for a conflict to exist. A similar name for related goods can be refused just like an identical one. See the article on how different a name has to be.

Section 2(d) also has a built-in exception called concurrent use. The USPTO can issue concurrent registrations to more than one owner of the same or a similar mark when it finds confusion isn't likely under "conditions and limitations as to the mode or place of use." The application has to state the geographic area where each party uses the mark, and any registration that results carries those limits.

It's narrower than it sounds. The statute generally requires that the applicant became entitled to use the mark through lawful use in commerce before the other party's earliest filing date, unless the other party consents or a court has already decided that both may use the mark. The applicant has to be using the mark already, has to identify the other users, and carries the burden of proving it's entitled to the registration. The question is generally decided in a proceeding before the Trademark Trial and Appeal Board, not by the examining attorney.

So concurrent use isn't a way to file for a name you just found out about. It exists for businesses that each lawfully built up the same name, usually in different places.

If they stopped using it

Section 2(d) only protects a prior mark that's "not abandoned." Under the Lanham Act, a mark is abandoned when its use has been discontinued with intent not to resume, and three consecutive years of nonuse is prima facie evidence of abandonment.

That's evidence, not an automatic result. The owner can rebut it. And it cuts both ways: a federal record marked dead doesn't prove the name is abandoned, because the business may still be using it, and a live registration doesn't prove the mark is still in use.

What this means before you file

"Already in use" isn't a yes or no. The useful facts are who's using the name, what they sell under it, where, and whether they started before you. Federal filings answer part of that. The rest comes from looking at how the name is used in the market, which is part of what I describe in the article on searching before filing. None of it guarantees an outcome, since likelihood of confusion is a judgment the USPTO makes case by case.

If you're weighing a name that someone else is already using, you can read how the search and filing packages work on the services page, and the FAQs page answers most of what people ask before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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