What Happens if Someone Else Has Your Business Name Before You Register it as a Trademark?
Trademark law can be a treacherous landscape, especially when you find that another company has secured the name you plan to use for your business. This article navigates through the procedural intricacies and provides actionable advice on dealing with such situations.
Procedural Considerations for Prior Usage
If two entities start operating in the same market segment without registering their business names as trademarks, and the second entity registers the name, the first entity still has grounds for a legal argument. Under most jurisdictions, if the first user can prove they used the name before the second entity's registration, they have the right to claim priority of use. This priority can be leveraged during the trademark registration proceedings.
Opposition Procedures and Public Recognition
During the trademark registration process, there's a specific timeframe known as the opposition period, where any party can oppose the registration based on prior user rights or prior use. If you missed this window, don't despair. If your business name is well-known and recognized by the public, you can utilize provisions for well-known marks—which can even invalidate an already registered trademark if there's a likelihood of consumer confusion regarding the origin of goods or services.
Legal Consequences of Unauthorized Use
Upon discovering that another company has registered a trademark for the name you want to use, cease all use of the name immediately. This is crucial. If the second entity discovers continued use, they have the legal right to initiate a lawsuit for trademark infringement. However, if you are in different business classes, there is no direct infringement, as evidenced by the case where the tech giant Apple cannot sue a plumbing company named Apple.
Coexistence Agreements: Recognizing Conflicting Trademarks
When both parties are willing to coexist but their interests overlap, a coexistence agreement can be a viable solution. This agreement acknowledges that both parties are using the same mark, but it establishes specific rules for how the mark can be used. Coexistence agreements can be complex and may involve financial compensation, especially if the business in question is highly profitable. Though these agreements are not free, they offer a graceful resolution to prevent legal battles and ensure mutual respect for each brand's identity.
Conclusion
Navigating the realm of trademark law, particularly when another entity has already registered your desired business name, requires careful legal consultation and strategic planning. Whether you can reclaim priority use, seek public recognition, or engage in a mutually beneficial coexistence agreement, the key is to act promptly and with the guidance of experienced intellectual property attorneys.