As we have highlighted on this blog before, you should always perform a trademark search before applying for a trademark. There are many reasons for this, one of which is because you don’t want to waste time and money applying for a mark if someone else already registered your mark or another confusingly similar mark.
If your search reveals that someone else has such a registration, you have several options.
First, check the goods and services associated with the registration.
If the goods and services is for faucets and you want to operate an airline, you are probably ok. That is because consumers won’t be confused into thinking your airline is associated with the faucet manufacturer. Figured it out yet? We’re talking about Delta. Delta airlines is rarely confused with Delta faucets, therefore registrations for both would likely be allowed by the USPTO.
(There are some limits to that for famous marks. For example, you probably can’t use “McDonalds” for any reason, even to sell computers, simply because of how famous their mark is in the eyes of consumers.)
Second, you might be able to keep using your mark, even if the goods and services are the same.
As we’ve said before, trademark rights stem from use in commerce. If you’ve used your mark in your hometown for years and someone else obtains a USPTO registration of your mark because they use it too (on the other side of the country), that doesn’t necessarily mean you have to stop because you used it first.
However, it probably means you can’t expand too far. You might be able to expand to a neighboring city, but your rights to expand nationwide would be much more limited. This is why you should always seek registration when you can!
Third, pick a new mark.
This is sometime easy (for new companies) and sometimes really hard (for old established companies).
If this is an option for you, it is often a simple way to fix the potential confusion that may result from two similar names.
Lastly, get permission!
Although this is not always an option, it might work in your case. We’ve seen it work before.
Look up the owner of the registration in the USPTO database. Do your research. And if you find that confusion is unlikely, you can contact them and ask them to write you a letter (which you might write for them to sign) that says they consent to your registration of your application. You can then submit that electronically along with your application and the USPTO will accept that and allow your mark to be registered (pending other reviews of course).
Talk to an attorney!
While an attorney isn’t always necessary in the trademark world, these are tricky issues and you should seek the advice of a trademark attorney before proceeding with these matters. They can help you in many ways.
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.