There’s no greater disappointment than coming up with what you thought was a distinct, memorable name that captures the essence of your business… only to find out another entity is using it.
When this happens, many companies are understandably deterred enough to drop the name and brainstorm fresh ideas. Your name is a substantial part of your brand identity, and you don’t want to risk confusing your target or inviting an onslaught of legal issues. But maybe you’re smitten enough with that winning name to wonder: Can I use the same company name as someone else?
There are circumstances in which two companies can legally use the same name without interference. Trademark law can be complicated, but here’s an overview of the factors that could impact the name’s availability.
Likelihood of Confusion
Trademark law exists to prevent consumer confusion and allow consumers to identify the source of a particular good. Likelihood of confusion is the standard by which trademark infringement is established. If a customer is unlikely to be confused by two companies using the same name, it’s quite possible that both companies will proceed without any issues.
For example, a sporting goods retailer could call itself Intrepid and not interfere with a travel agency by the same name. But if a travel agency of that name exists and you want to start a website called Intrepid that allows people to compare airfares and find the best price, that comes quite a bit closer to meeting the likelihood of confusion standard.
Location also factors into the likelihood of confusion. If there’s a local boutique in one state with the same name as a local boutique in another, there may not be any issue. However, if one or both of those boutiques has an online store and ships nationwide, things get a bit trickier. Location is important primarily because it dictates whether or not the two businesses are competing for the same customers.
Registering a trademark for your company name strengthens your right to use it, but there’s also something called common law trademark. A common law trademark takes effect the moment you start using that trademark publicly. You do not have to officially register a trademark with your state or with the federal government to obtain common law trademark status. However, it only applies to your geographic area, whereas a federally registered trademark applies nationally and perhaps even helps you internationally.
Even if a competing company has not registered its name with the United States Patent and Trademark Office (USPTO), it may still have seniority in its geographic area through common law trademark/prior use.
Let’s say your situation is the other way around: another company has started using a name that you’ve been using for months or years, and you want to know if you have any recourse. You can potentially protect your trademark by proving prior use.
Keep in mind that many companies don’t do their due diligence in researching trademark issues and begin using names without knowing whether or not they’re actually available. It’s quite common for people to think they are in the clear if the trademark search tool on the USPTO website doesn’t yield any results; unfortunately, it often only shows some of the relevant matches, and likelihood of confusion is typically based on phonetic similarity. A company could be infringing on your trademark without even knowing.
Famous Mark Factor
Fame is another aspect of seniority. Names with a certain amount of recognition from the public enjoy more protection, whether or not they are registered. This is because the business’s wider reach and awareness expands the potential for likelihood of confusion.
Why We Perform Preliminary Trademark Screening
An essential step of the NameStormers process is a trademark screening using tools that trademark attorneys use. The reason we do this when most other naming agencies don’t is because we want our clients to have a full menu of potential usable names … from the less risky to those that are pushing the edge.
We trademark screen as many names as it takes for you to feel confident moving forward. Get in touch with us to hear more about our process and get started on naming your business.