What if your Trademark is Taken Already? (Photo Credit = Francesco Bianco via UnSplash.com)

I Found My Trademark Registered by Someone Else for Different Goods or Services — Does That Create an Issue?

The legal rules and laws surrounding the trademark process can be overwhelming and confusing if you are a small or medium business owner going through the process alone.  Trademark law can be very particular, precise, and unforgiving.  Like most areas of the law, ignorance of the law usually can hurt you (and is not a defense).  One of the most common dilemmas faced by small and medium business owners wishing to seek trademark protection for their brand is the existence of another brand or company that already has a registered trademark for the same or similar logo or name being sought.  While even a layperson will likely be able to tell that this is a problem (in the case when the goods/services of both companies are identical), the question become murkier when the existing trademark registration is not for an identical type of good/service as the trademark you want to seek to protect.  

While the products or services associated with the trademark may not seem directly linked to your business, it's important to understand the potential risks and legal implications.

Here, we'll break down the key considerations and steps you can take to protect your trademark and your business.

Are Different Goods or Services Actually a Problem?

One of the most important things to keep in mind is that, as far as the USPTO Trademark Office and law are concerned, goods/services of a registered trademark do not have to be 100% identical to pose a problem for your ability to secure a trademark (or even to conduct business under an unregistered trademark).  Closely related or similar goods/services can likewise raise the specter of "likelihood of confusion" among consumers - and this is the key threshold and standard employed by the USPTO Trademark Office during the examination phase of the application process.  

This means that even if the specific goods or services are different, the USPTO Trademark Office can still issue a Section 2(d) refusal on a "likelihood of confusion" ground if they are considered related or similar to those of an already registered federal trademark.

For example:

• If you operate a clothing brand, and someone else registers your trademark for handbags, a conflict could arise because both products are in the fashion and retail space.
• Similarly, a trademark for coffee shops might create issues if a similar or identical mark has been registered for a coffee product
• Your ethnic restaurant may be deemed related or similar to a food delivery service

The issue lies in whether consumers are likely to believe the goods or services come from the same source. This is assessed through factors like:

• The similarity of the marks themselves (e.g., visual and phonetic similarities)
• The connection or overlap between the markets for these products or services
• Whether there is a likelihood of brand dilution or harm to the reputation of your trademark

Even if the goods or services are vastly different, you'll want to consult with a trademark attorney to confirm there's no risk of confusion or other legal implications.

Is the Other Registration Still Valid and/or Still In Use?

Another key factor to take into account is to figure out if the trademark you saw when you did a search (or that you heard of through the grapevine) is actually still valid.  When you perform a search of the USPTO's database online, the search engine will return both "live" and "dead" applications/registrations.  It is, therefore, important to know whether the trademark you are worried about is actually still in force.  A federal trademark registration can last forever, but the owner needs to take certain periodic steps to "renew" the registration and prove to the USPTO Trademark Office that they are still using that trademark in commerce for all the goods/services listed in the registration.  If a trademark registration is not timely renewed, it will be canceled and thus will not be raised by the USPTO examiner as a Section 2(d) refusal ground based on a "likelihood of confusion."  (However, if the company is still in business and using the mark - they may file an opposition so it is important to do your research!)

In the United States, if a trademark owner fails to use their mark in commerce for a certain period (3 years) it could be considered abandoned. (or, you could petition to have it canceled)  

If their registration is no longer valid or vulnerable to cancellation, you may have a clear path to securing your legal rights.

What Should you Do to Avoid a Problem?

A key first step is to conduct a thorough research of not only the problematic trademark registration, but also of other similar registrations.  Sometimes, a particular word, phrase or design is given only narrow protection by the USPTO Trademark Office because it is somewhat diluted (through prolific use within a given industry).  Trademark attorneys will refer to this as a "crowded field."  If there is sufficient evidence of a crowded field (and if your trademark is similar but not identical) - that analysis can also help. 

When searching the USPTO's database via the USPTO's Trademark Search page - learn to use the "coordinated classes" search tools to help identify what are coordinated classes with your own intended use.  Also, be sure to check the ID Manual at the USPTO to determine what class your good/service belongs in, to assist you with interpreting the search results. 

Determine whether the registration creates a likelihood of confusion. Ask these critical questions:

• Are the goods or services similar or related?
• Is the other party's target market the same as your own?
• Does the other trademark dilute the distinctiveness of your brand or harm its reputation?

This analysis often requires legal expertise to ensure all legal and practical considerations are considered.

Investigate whether the trademark is actively being used and properly maintained. If not, you may have grounds to challenge the other party's registration by filing a cancellation action or claiming non-use.

Consult with a Trademark Attorney

Trademark law is complex, and every situation is unique. The best course of action is to consult a qualified and experienced trademark attorney to evaluate the situation. They can help you:

• Determine if the existing registration poses a legal threat
• Develop a strategy for asserting your rights, whether through negotiation, cancellation, or litigation
• Navigate the procedural rules and deadlines involved in any legal actions you may need to pursue

Experienced trademark attorneys will conduct a Clearance Opinion to determine what your risks and chances are, and will educate, inform, and advise you on the pitfalls, and/or strategies that exist, and how to potentially deal with them.  That way, you will be able to make a sound decision based on full knowledge (and hopefully less stress and worry about the unknown).

The Bottom Line

Even if someone else has registered your trademark for different goods or services, it might still create an issue depending on the similarity of the products and the likelihood of consumer confusion. Acting quickly—and strategically—is key to preserving your rights.

If you're facing this situation, don't leave it to guesswork. Speak with an experienced trademark attorney who can guide you through the complexities of trademark law and help you secure your rights confidently. Contact us today to schedule a consultation and ensure your brand remains protected.

In that regard, be sure to remember that our law firm is versed in trademark law and the registration process at the USPTO Trademark Office.  As such, we are always available to assist clients with a Clearance Opinion and/or prosecution of their application before the USPTO Trademark Office.  We also provide a free initial consultation.  So, if you have a concern about a pre-existing trademark registration, contact us to see if we can help you! 

Contact us for a Free Consultation on your Trademark matter!