Trademarking a Business Name Already in Use: Understanding Legal Boundaries

When you want to trademark a business name that is already in use but has not been registered, it is possible under certain conditions. However, the key factor is whether the existing mark is confusingly similar. This article will explore the nuances of trademark law as it relates to pre-existing business names, the factors that courts consider, and the importance of a thorough trademark search.

Understanding the Confusingly Similar Standard

According to trademark law, you can potentially trademark a business name that is already in use, especially if those businesses are in different industries. The critical test is whether the average consumer would be likely to confuse the two marks. This standard applies even if the two businesses are in completely different sectors.

In practice, many individuals or business owners might apply a more liberal definition of similar but not identical. However, from a legal perspective, this definition is often more stringent. For example, simply adding the word the to an existing mark or modifying its spelling does not necessarily create a distinct mark. Courts have often found that marks like SEACRET and SECRET or HOG and HAWG are too similar to prevent one from obtaining a trademark for the other.

Examples of Marks Considered Too Similar

Let's take a look at some examples of marks that have been deemed too similar:

SEACRET and SECRET HOG and HAWG DATSUN and DOTSON COCA-COLA and CUP-O-COLA OLD FORESTER and OLD FOSTER BLUE THUNDER and BLUE LIGHTNING YAMAHA and MAKAHA TORNADO and CYCLONE

In each of these cases, the similarity was not just in appearance but also in pronunciation or association, which could confuse consumers.

The Role of the |Average Consumer| Test

When determining whether a new mark is confusingly similar to an existing one, courts consider the average consumer test. This involves weighing several factors, including:

Similarity of the marks in appearance and sound Similarity of the marks in concept Relatedness of the goods or services offered by the companies

For instance, if you were to start a camera company and use the mark NYKON, it would create a clear risk of confusion with NIKON, even though the marks are spelled differently. This is because the target audience (camera buyers) would recognize the similarities and potential mistakability.

Trademark Legal Search and Risk Assessment

The best approach is to perform a thorough search of the trademark registers related to the categories of goods and services of interest. A professional trademark attorney or examiner can then provide a detailed analysis of the risks involved. Even if the registers do not reveal a full picture, there are various reasons why an owner might not record their trademark or might have registered similar marks under different names. Additionally, unused registrations might be canceled due to inactivity.

Conclusion

While you can potentially trademark a business name already in use, the likelihood of success depends on the similarity of the marks. It is crucial to conduct thorough trademark searches and seek professional advice to navigate the complexities of trademark law. Whether you choose to file an application and see what happens, or take a more cautious approach, understanding the principles of confusingly similar marks and the role of the average consumer test is vital.