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Written by : Jessie Ghiloni
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hello i'm tami shambati houston-based attorney and host of ask timmy live and today's question of the day is can i trademark a name that someone else is already using now this is a question i get asked all the time and it's a great question so here's the answer it depends with a strong leaning towards the side of no but it depends and let me unpack that a little bit more why am i saying it depends well let's say you want to use a name that someone else is using but they are not in the same lane as you perfect example we have delta airlines and we have delta faucets delta airlines is operating all the way over here delta faucets all the way over here is it is it likely that someone is going to mix up the two companies do you think that someone who is going who is looking for airlines right booking a flight is going to accidentally try and book a flight with the faucet company no there's not a likelihood of confusion there right and so in such instances where the name that you're trying to use is a name that's being used but in a different industry with different goods and services then yeah maybe if however you're trying to copy the name or do something similar use the name of product or service that somebody is already using even if they haven't already registered it but you're in that same lane you know you're wrong we don't have to talk about like there's a legal side to this but you already know what you're trying to do right um and so we're going to say that that's a no and the law is going to agree and say that's a no because they do not want a likelihood of confusion if you're trying to operate in this area where somebody else has already established their roots why are you trying to do that it's not nice um and the law reflects that they want to look at first on use so when they're looking at who has stronger rights to a name surprisingly it is not the first person to register the name it's the first person to use the name and registration service has proof of your use it's not the only form of proof that can be proffered or provided but it is strong proof and it also provides notice to the rest of the world that hey this is my lane i own this area okay so don't come and play over here right so that is what essentially happens and that's where you get that strong no if it's a similar good similar service then you don't want to do that but if you're in two different areas so we already gave the example of the delta there's also this golfing company called my girl so they're talking about the golf clubs and so they're called my girl golf clubs i don't know why but they've registered a mark when it comes to golf clubs there's another mark when it comes to guess what dolls and clothing and apparel for the dolls that's called my girl they can operate and coexist because they're operating in two different markets they're operating in two different channels they're operating with two different products and services they're not trying to confuse each other they're not trying to steal each other's business they're doing their own thing right and so that's what i want to encourage you to do as well if you see that someone has something that is similar to the name that you want to use or exactly the same it's probably better that you go back to the drawing board and even as a business owner if there is something that is so similar to yours like a lot of times i have people who come to me and they say that oh it's different from mine because mine i have two e's and they have one e or you know let's say they're saying um miss miss stacy's and they're like oh miss stacy with a y and this one is miss stacy with an i well do you want your customers to have to think that hard has to which which company they're trying to deal with from a marketing perspective from a branding perspective that's not what you want because that could cause them to accidentally give the other miss stacey with the y the money that they intended to give you miss stacy with an eye the example i gave is very interesting but essentially that's what you should keep in mind um if you're operating in two different product areas then it might be okay but i also want to caution you when you're deciding what your brand is going to be and the marks you're going to use think about not only what you're currently selling the goods and services that you're using now but the areas where you might as eventually expand into because that can cause you trouble in the future if you expand into an area where there's a mark that already is in use perfect example is apple when apple started there was apple computers that they created but there was also apple music now they thought at the time that yo we're in two different lanes i'm not crossing into your lane we're good right music computers or music computers well what happened over time apple decided the great idea of itunes and and ipods and all of this music related material goods and services that they started to provide and guess what apple music that was saying hey we don't want you to play in our playground when they started was like now you really are making a mistake and guess what apple music got paid a lovely sum of money by apple computers because they were in the right and apple computers was in the wrong so you want to keep that in mind when you're thinking about your name it's like okay right now i'm just selling this but i think i'm gonna sell this this this and this as well let me make sure that those areas i have some type of i'm coming up with some type of strategy to make sure that nobody else is using it and that area remains um protected for me that was a lot i hope it was helpful if it was go ahead and like this video share this video subscribe to this channel and then follow me on social media you can find me at tos legal you can find me on instagram twitter facebook and you can visit my website wwe and let me know if you have any other questions drop a comment below love hearing from you and can't wait to talk to you soon have a great great great week bye bye
Thanks for your comment Krystin Lagrenade, have a nice day.
- Jessie Ghiloni, Staff Member
hey folks today we're going to be taking a look at a couple of websites that will help you to do some logo image searches now there's nothing worse than creating a logo concept or even taking a logo to a final design stage only to find that someone else is either using the logo or it's been registered as a trademark it's a big waste of time and potentially a big waste of money so one thing that i do when i'm creating logo designs is when i get to the stage in the design process where i'm happy with a concept i will go and search the internet to see if there are any logos which are exactly the same or very very close to the concept that i've created now there are a couple of websites that i use to do that one in particular which helps me actually check to see if the logo is a registered trademark so let's jump in and let's take a look at a couple of logo designs and see what results we get on each of these websites so the first website that we can use is good old google and you want to choose the image search option on google so if you go to google.com uk or google.com whichever is your base google home page if you look up on the right hand side in the window you will see a link that says images so if you click on that you will get a new window and there's a little camera icon if you click on search by image it will open up this window and what you can do is you can drag in an image from your desktop or you can upload the image or you can even paste in a url from an image which you find online so i have a couple of logos off to the side here uh the first one i'm going to choose is the nike swoosh so let's drop that in and see what results google gave us so no surprise there but google has picked up that it is the nike swoosh and it's showing a few options there and it's giving us some links through to those pages the next site that i use is 10 i i've used that for quite a few years i find it can be hit or miss a bit like google to be honest uh sometimes it picks it up and sometimes it doesn't which is why it's another reason i like to use more than just one site when i'm looking for image results so let's pull the nike swoosh into here again you can just drag it in or you can upload or paste the url and like google tni has pulled up the nike logo with links to websites that we can go to and check out for more information and the last website i'm going to show you is the wipo global brand database now this is a site that i use a lot because it covers all of the countries that have trademarks and its database is fairly comprehensive you can search for a simple name so if you're looking for if you're thinking about changing a name or creating a name for your business you can go into here and over here on the left hand side of the page you've got search by you can put in you can type in a name and it will search to see if there's a trademark with that name i actually have a video where i show you how to do that process with a couple of different filters and you will see the link for that at the top of the screen now i will also include a link to that in the description of the video the one that we are interested in today is on the right hand side which is the filter by section and it will be on source when you first get here but if you click on the image tab you will see some options over here for doing an image search so we've got concept which does a search for images determined by the artificial intelligence to contain similar concepts to the image that you upload with shape images with similar lines similarly distributed through the image it ignores any color that you have in the image that you upload then we've got color images with similar colors similarly distributed throughout the image less accurate on the shape side of things so if color is important then that's the one that you probably want to filter by and then you've got composite which uses all of the ones above but again it's a little less accurate because it's trying to kind of fit it in with everything so generally the best thing to do is i will do a search under each of these for the same image just to see what results come up and it gives quite a good intensive search that way and you also have an image type so if it's text you know if it's a word mark you can click on verbal and it will look for uh it'll do a search for images that contain text you've got non-verbal so icons are graphics then you've got combined so you could have an image and text and then you can just choose unknown and it will just kind of do a search there on its own so you can see here that the wipo search is a lot more comprehensive than google or 10i in that with google antenna you just drag your logo in and it just automatically searches the web with wipo website it does a more comprehensive search and searches for trademarks in its database so just to make clear wipo searches it its own database it does not search the internet so with the results in wipo you will be getting results from registered trademarks there may be logos out there which are similar to the design you've created but might not show up in a google or 10i search and if they're not a registered trademark then they will not show up in the wipo search either so as much as you know i'm using these three sites it's not comprehensive but it does give you a good indication whether or not you know you should proceed with that concept so again let's drag in the nike logo and we've dragged that in now and we're going to choose shape for this one and we're going to say it's non-verbal and then what you do is you go over to filter and just click on filter so you can see here that it has brought up lots of swishes now i'm using the grid search here because you can see more images in one place there's a little uh set of options here list view and grid view if you click to list view it shows all the logos down the right hand side and gives you all of the information the brand name the who holds the trademark the company whether it's active or inactive so there's a lot of information there you can also click on the uh line in the column or the image in the grid and it will open up even more information now one thing that can be frustrating is once you've looked at this information do not click back on your browser back button because that will just take you out of the search you want to click on this little back link here that will take you back to the search results that you were in so we can see here by going through wipo 10 i and google that the nike swoosh comes up and it's really clear that it's there so you wouldn't want to create a logo which is similar to the nike switch so let's do a couple more searches using some famous brand logos and then we will do a search with a logo concept which i have developed so we want to go back to the image search so we'll get that open and i'm going to pull in the gucci logo this time and see what google does with that yep straight away it's brought it up it's given a possible related search as well so vector gucci logo and you can see here we've got some images and some web page results as well we'
Thanks Virgen your participation is very much appreciated
- Jessie Ghiloni
About the author
I've studied word usage at Lehman College, CUNY in The Bronx and I am an expert in public finance. I usually feel listless. My previous job was medical photographer I held this position for 30 years, I love talking about billiards and investing. Huge fan of Kevin Gates I practice unicycling and collect film memorabilia.
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