Can Two Business or Products Have the Same Name?
You’ve come up with a clever name for your product or business and run a Google search on it, and there’s another product or business with the same name, or a very close one, in another state.
But they haven’t registered the trademark with the U.S. Patent & Trademark Office.
It may be tempting to go ahead and use the name because you like it and have become attached to it. In this scenario, you could use the name.
The other company, with an unregistered trademark, only has limited rights, called “common law” trademark rights, which are not nearly as expansive as registered trademark rights.
The company who first used the name and didn’t register it can only enforce its rights against others who use the name in the same geographic area where they have a certain threshold of market presence.
Depending on the business model, including the extent of their online sales vs. a business that is only local (e.g. single location coffee shop), you can legally use the same name in another part of the country if they haven’t registered the trademark. But should you?
Let’s look at a few possible scenarios involving the single location coffee shop:
You Don’t Register the Trademark
It’s been open in one location for 2 years in Virginia. They didn’t register the trademark. You’re opening a tea shop in Florida and decide to use the same name.
At the moment, it’s unlikely either of you would have any cause of action against the other for trademark infringement, because unregistered trademark rights are geographically limited.
A year after you open your tea shop in Florida, the Virginia coffee shop decides to start selling its ground coffee online and expanding its locations. It has a substantial number of customers in Florida, and they’ve realized they need to register the trademark. They register the trademark.
Now, they have national rights to the name and can stop anyone else with a coffee shop (and probably a tea shop) from using the name, including you, because you started using the name in commerce after they did.
After all the dollars you’ve invested in marketing your tea shop, you could be forced to change the name.
You Register The Trademark
Now let’s say you’re ahead of the game and you register the trademark for your tea shop as soon as you open for business.
You now have national rights in the name . . . however, the Virginia coffee shop was using the name before you were. Even with your registered trademark, they can still use the name because they were using it first.
You have trademark rights against anyone coming later in time than you, but never against anyone coming before you. And now the Virginia coffee shop wants to expand their business online and with new stores, moving into other states.
If your registered trademark is less than 5 years old (meaning it is not yet eligible for incontestability), they can file a petition to cancel your trademark registration, file for registration themselves, and force you to change the name.
Need Help with Trademark Registration?
“No matter how much you like a particular product or business name, it’s not worth the risk of headaches and expense to use a name that’s already taken anywhere, whether they have registered the trademark or not.”According to trademark attorney, Ashley Brewer
And besides, don’t you want to stand out in the market with a clever name that no one else has? Be original! It will pay off.