Can I trademark a name already in use but not trademarked?

When considering whether you can trademark a name that is already in use by someone but not formally trademarked, several key legal and strategic factors come into play. Here’s a breakdown of the main considerations:

1. Common Law Trademark Rights

In the United States and some other jurisdictions like Canada, using a name in commerce can establish "common law" trademark rights, even if the mark has not been officially registered with a government agency like the United States Patent and Trademark Office (USPTO). These rights are generally limited to the geographic area where the mark is actually used. To find these you can search, for example in Google, Google Maps and Amazon (and other online sales platforms). Also, these may be protected in State Trademark Databases or in State "Secretary of State" offices. Therefore, if someone is already using a name in business, they may have common law rights to the name in their local area or region.

2. Formal Trademark Registration

Registering a trademark formally with the USPTO or another national registry offers broader protection, including exclusive rights to use the mark nationwide in connection with the goods/services listed in the registration. If another similar mark is already registered it may block your application. There are also state trademark registrations which give varying rights. Here's how you can approach this situation:

a. Research the Use

Before attempting to register a name as a trademark, conduct thorough research:

• Trademark Search: Check the USPTO's online database to see if the name is already registered or has pending applications.
• International Search: Some bigger brands do not operate in the US and they might not have a Federal Trademark Registration, but they may still sell product here and be famous. You can look at WIPO Global Brands Database.
• Market Search: Look for any unregistered uses of the name that might not appear in the trademark database. This includes searching online, checking domain registrations, and looking at local business directories. (Google, Amazon etc.)

b. Evaluate the Scope and Geography

• Geographic Reach: If the existing use is limited to a different geographical area where you plan to do business, and they have not registered the mark, you might still be able to register and use the trademark in your area or nationally. Verify the extent of the use of the other mark, without alerting them to your intentions.

• To determine the geographic reach of a particular trademark, you can take the following steps:

  1. Check the country or jurisdiction where the trademark is registered: This information is typically available through online trademark databases or by consulting with a trademark attorney or relevant government agency.
  2. Investigate if the trademark is registered internationally: If the trademark owner has utilized the Madrid System or other international registration systems, the trademark's protection may extend to multiple countries.
  3. Review the scope of use: Examine the markets and regions where the trademark is currently being used or marketed. This can provide an indication of the geographic areas where the trademark may have acquired rights through use.
  4. Assess the reputation and goodwill: Consider the level of recognition and reputation the trademark has achieved in various geographic regions, as this may influence the scope of its protection, even in areas where it is not formally registered.

  It's important to note that determining the precise geographic reach of a trademark can be complex, especially in cases where there are overlapping rights or disputes.

• Type of Goods or Services: If the existing user operates in a completely different industry, it’s possible to register the same name for unrelated goods or services. Visiting the website and searching online platforms like Amazon will help to know what the existing user sells. Trademark rights are often limited to specific classes of goods or services, and similar channels of trade.
• Descriptive Trademarks: Sometimes other brands are descriptive, so they describe the goods or services in some way. If the use of the trademark is descriptive for their products, the protection may be less and you may still be able to use the mark for your own products, if it's not a descriptive use.

3. Potential Legal Challenges

Be prepared for possible legal challenges:

• Opposition: The existing user might oppose your trademark application if they believe it infringes on their common law rights.
• Cancellation: Even after registration, your trademark could be subject to cancellation if the original user proves that they have prior rights and that your use causes confusion. However, filing a declaration of incontestability will help to avoid challenge after registration.
• Trademark Infringement: a prior user can enforce rights for trademark infringement if you are using their mark or something similar and benefiting from their goodwill.

4. Ethical and Strategic Considerations

• Brand Identity: Consider whether it's beneficial for your brand to have a name that might be associated with another entity, even if legally permissible. Usually more distinctive marks with more of a "moat" are stronger brands.
• Trying to benefit from another's established goodwill is impermissible, however you are free to compete in the marketplace.
• Legal Costs: Defending your trademark in oppositions or cancellation proceedings can be costly.

5. Consulting a Professional

Because of the complexities involved in trademark law, especially concerning common law rights and potential conflicts:

• Legal Advice: It is highly recommended to consult with a trademark attorney who can provide specific advice based on the particulars of your case and help navigate the application process and any potential disputes.

Conclusion

While it is possible to trademark a name that is already in use but not registered, doing so involves careful consideration of existing use, potential conflicts, and the geographic and industry-related scope of the intended use. Thorough due diligence and possibly legal counsel are crucial to navigate this process successfully.