Can I Trademark a Name Already in Use Without a Trademark?

Overview of Trademark Law and Common Law Rights

As a general guide, trademark law primarily protects distinctive marks used to distinguish goods or services in commerce. Even if a business is already using a name, if it has not registered it as a trademark, it may still acquire common law trademark rights through its use in commerce. However, the protection and benefits of a registered trademark are substantially greater. Before applying for a trademark, consulting with a qualified intellectual property attorney is highly advisable to assess your specific situation.

Can You Trademark a Name Already in Use?

Trademarks cannot be secured for names that are not used in trade. This means that the name must be applied to a product or service being sold or planned for sale. If a name is already in use but not registered as a trademark, it may still have some common law rights, but it has limited legal standing. In the US, the US Patent and Trademark Office (USPTO) now discourages the use of individual surnames (last names) as trademarks, unless they are distinctive enough to be recognized as such.

For instance, if you are seeking to trademark a product name, this is generally accepted, as long as it is not identical to a name already in use. However, if you are considering trademarking a person's name, it is advisable to avoid using the name as a trademark, as the USPTO now discourages such practices.

Under US law, if a mark is already in use or a similar mark is already in use for the same category of goods or services, it can conflict with a proposed new mark and may prevent the registration of the new mark. The geographic scope of the existing use and how distinctive the existing mark is also play crucial roles in determining the outcome.

Strategies and Legal Considerations

If you wish to trademark a name that is already in use, you can certainly proceed with the application. However, doing so opens the door to potential legal challenges. If the business using the name can prove they began using it first and are currently using it, you may face complications. Thus, it is wise to approach such actions with caution and legal guidance.