Filing for a Trademark That Already Exists: What You Need to Know

Have you wondered if the name you intend to use for your business is already trademarked? Or if you can trademark the product or service driving your new business idea? Properly trademarking your company’s product or service is as important to your business as the development of the product or service itself. 

A quick note before we get started: Remember that a trademark differs from a copyright or patent. Patents prevent others from producing or selling a certain invention. Copyrights prevent others from plagiarizing original works of authorship. By contrast, trademarks protect the symbols, phrases, words, logos, or other means by which goods or services are identified or distinguished from competitors.

Your company’s trademark is not so much about the ownership of a given set of words, colors, or images but rather the overall brand conveyed to your customers. The trademark is how your customers identify your goods and services, so you want to create the strongest, most original one you can. In the case of trademarks already claimed, this can sometimes just be a matter of figuring out how best to distinguish your trademark from others like it.

People can claim a trademark before they actually register it. In fact, the more they make use of the mark, the greater the likelihood that the U.S. Patent and Trademark Office (USPTO) will approve it. Trademark rights come much more from usage than from the actual filing for protection. This article will walk you through how to apply for a trademark that already exists and provide tips for navigating your trademarking journey smoothly.

Research Your Trademark Name Before Filing

The USPTO reviews applications for trademark registration at the federal level. You can apply to trademark almost anything, but it does have to be approved by the USPTO as having met the trademark requirements outlined in the Lanham Act. Of all the federal statutes affecting trademark policy, the Lanham Act represents the trademark law governing most trademarking scenarios in the United States.

Before you formally seek trademark protection, you need to research the mark in question. Conduct a search with the USPTO trademark database ahead of time to see if this trademark is already in formal use by someone else. This also gives you a chance to get a feel for how many similar trademarks exist among your business’s competitors.

Grounds for denial of a trademark can range between many extremes. For example, trademarks can be denied if they are considered primarily geographically deceptive. If you were to try to register a trademark for the phrase “Boston’s Best,” but your company and its factory are based in Tucson, Arizona, that phrase suggests a misleading geographic area. Other reasons trademarks may be denied include:

• Ornamentation only
  • For example, if the trademark for “Boston’s Best” was used to trademark an everyday expression or a prominently displayed quote, it may be rejected.
• Primarily a surname
  • For example, if instead of “Boston’s Best”, the trademark was for “Garciaparra’s Best”, it may be denied.
• Merely descriptive
  • For example, just the word “best” is merely descriptive and would be rejected.
• Phonetic or other similarity to an existing trademark
  • For example, a trademark application for the “Boston Redd Socks” would be refused as it sounds too phonetically similar to the “Boston Red Sox”. 

As freelancing and consulting become more popular and more people focus on flexible work environments, it’s more important than ever to trademark items such as your logo or brand image. If you’re starting a boutique finance firm, you need to attract customers and have them remember your company amid the sea of other businesses like your own. 

No matter your industry, perform a trademark search on existing trademarks for logos, associated imagery, and company taglines, as this will help ensure that your brand sticks out from the crowd in the best way.

What to Do If Your Trademark Is Claimed

If you start the trademark application process and find out that the trademark you want is already in use, don’t skip straight to contacting a law firm. You can possibly still move forward with the mark. Here are four steps to try if your intended trademark is already in use:

1. Consider the category of the existing trademark compared to your category
2. Look at when the trademark was first used, not registered
3. Contest the existing trademark with the business
4. Seek legal help for claiming your trademark

1. Consider the category of the existing trademark compared to your category

Trademarks are classified and categorized. If you find a similar trademark to yours, the first step is to evaluate whether it’s in the same category. The category refers to the class of goods or services you offer. Are you trademarking a particular phrase related to the specialized wood treatments your small carpentry LLC offers? If something similar to that phrase is in play in the food industry, you’ll probably still be able to use it, as your woodworking mark would fall under a different business categorization.

For any trademark application, the USPTO will evaluate the likelihood of confusion with any existing registered trademark. Is it just a similar name or a similar name within the same market? This is particularly important when a name, logo, or color pattern might be simultaneously used in two trademark categories.

While there is no definitive, black-and-white rule for determining if a mark is confusing, you don’t want a brand name too close to another company’s name in the same category, as this would almost certainly contribute to your service mark inadvertently feeding your competitor. 

A few examples of similar marks deemed too close for comfort by the Trademark Trial and Appeal Board (TTAB) are:

• Magnavox and Multivox
• Mr. Clean and Mr. Rust
• Platinum Puff and Platinum Plus

You’ll want to search by classification or design code in the Trademark Electronic Search System (TESS) to determine what is already taken in your area of interest.

2. Look at When the Trademark was First Used, Not Registered

Business owners can, and very often do, use trademarks before they have formally registered them. They can then claim that trademark after the fact by proving they’ve used it for whatever duration since. In the trademark tongue, this is called claiming “first use.” Your rights to a given trademark start from the date of your first use, and you don’t have to have filed at that time for your trademark to be protected.

There are two types of first use dates when proving your exclusive rights to an existing trademark. The “date of first use in commerce” refers to the first time the mark was used in conjunction with a sale of related goods or services. The “date of first use anywhere” refers to the first time this particular mark was used in any capacity relevant to your business.

When establishing first use, you’ll be asked to provide supporting documentation in the form of what the USPTO calls “specimens.” Specimens may be anything from a photograph of your company’s logo or tag on the goods to the packaging of your goods with the trademark on the packaging. 

Digitally altered photographs are not admissible as specimens; neither are items such as invoices or letterhead. Check these basic facts about trademarks to ensure that you can provide the right specimens for claiming your trademark.

3. Contest the Existing Trademark with the Business

You can take several approaches if you think you own the right to a trademark already in use. Because trademark owners must supply the USPTO with consistent, updated proof in the form of a Section 8 Declaration of the trademark utilized for active commerce, you might start by checking when that trademark’s last statement of use was obtained.

Section 8 Declarations are expected after the fifth anniversary of your mark’s registration but before the sixth. Trademarks not updated are considered abandoned and up for grabs after that sixth anniversary. 

Trademarks have to be renewed every 10 years, so this means that if you find that the trademark you want has been (or will be abandoned) but is still in the official ownership of another business, you will have two options. You can pay to transfer a trademark or work with the current owner to license some or all of the rights to it. 

4. Seek Legal Help for Claiming Your Trademark

Trademark infringement is a serious legal matter that most parties will strive to avoid; however, business owners will sometimes go to court to obtain their rights to a mark. There are several ways you can formally challenge an existing trademark in court. The most common are:

• Filing a petition to cancel the trademark with the Trademark Trial and Appeal Board
• Filing an opposition to a trademark application with the Trademark Trial and Appeal Board within 30 days of its publication in the Official Gazette
• Filing a declaratory judgment lawsuit at the federal court level to have the trademark deemed invalid or have the court formally declare that your mark makes no infringement upon it

Just as with the establishment of first use, you’ll be required to provide any of these overseeing entities with valid specimens showcasing your right to the legal protections associated with the trademark. It’s advisable to retain a U.S.-licensed attorney with trademark expertise before you embark on any judicial approach to claiming your trademark.

More Resources for Small Business Owners Filing for a Trademark

Trademarking can be a confusing process for many because they protect such a peculiar form of intellectual property. Make sure you consult with trademark professionals before you move forward in any trademark acquisition process.