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Written by : Elliott Talbert
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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 Branda Shoffstall, have a nice day.
- Elliott Talbert, Staff Member
when i'm talking with clients about new brand names which of course happens very frequently they often are under the misbelief that they need to come up with a name that is completely original and unique to do so would actually be extremely difficult a trademark or a new brand name does not have to be entirely unique it just needs to be unique in your industry and of course like everything in trademarks there is quite a bit of nuance and gray area to that and i want to spend just a few moments talking about that today you see trademarks can co-exist when they're used for different products and services some well-known examples include delta airlines and delta faucets or peter pan bus lines and peter pan peanut butter and there are many others that you've likely encountered or seen because faucets and airlines have very little if anything to do with each other and no consumer would be likely to believe that one is affiliated with or sponsors the other however if someone tried to launch a bus line or a car sharing service and use the delta name that might be a problem with delta airlines because they're both in the field of transportation similarly if someone was in the tile business or the bathroom repair business and use delta as their brand name that might cause a conflict with delta faucets because those industries are related or at least more related so there's no black and white easy boundary that can be drawn around a trademark and it depends where this line is drawn on how strong a particular trademark is and for that one would want to refer to the sliding scale of trademark protection where an arbitrary or made-up term has a much broader scope of protection in general than a suggestive term which has a broader protection than a descriptive term and finally a very descriptive term has very little protection and a generic term of course has no protection so these are the considerations that trademark attorneys are advising and discussing with clients all the time when they're proposing new names and doing searches to determine whether or not a name is clear it is very likely that you will find someone else using almost any name or a variation of almost any name that you can come up with but the key is whether or not it's going to create a likelihood of confusion given the factors of the goods and services and the channels of trade and how they're sold and how they're marketed and the other important factors under trademark law so trademarks can coexist in different industries but there is a lot of gray area every situation is unique and it is very valuable to consult an attorney when trying to figure out whether two in particular can co-exist
Thanks colinshrimpx your participation is very much appreciated
- Elliott Talbert
About the author
I've studied economic geography at Colorado State University in Fort Collins and I am an expert in catalysis. I usually feel giddy. My previous job was radiologic technologist I held this position for 29 years, I love talking about meditation and model aircraft. Huge fan of Ben Whishaw I practice rugby and collect stock and bond certificates.
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