UPDATED June 24, 2024
Can I Use The Same Name As Another Company?
Of course you can, but why would you when …
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You might get sued for trademark infringement?
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You create confusion among customers?
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You have to fight an SEO battle with another company?
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You limit your ability to build a unique brand?
But, you say, I love the name.
My partners love the name.
Even my kids love the name, so I really want to use it.
Ok then, you’ll first need to answer these questions:
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Do you sell something different than the other company?
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Are your customers different than the other company’s customers?
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Do you use different channels of distribution?
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Is your price radically different?
The key word here is different.
Different is what trademark law is based on.
Different is also what brand-building is all about.
Not everything has to be different.
But the more that is different the better.
So, I feel sorry for Dove.
Dove is the brand name for soap.
Dove is also the brand name for chocolate.
Yummy, soap-flavored chocolate!
Better yet, chocolate soap!
Dove the soap and Dove the chocolate are registered US federal trademarks.
By two different companies:
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Mars owns the Dove trademark for chocolate
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Conopco (boy, this name really rolls off the tongue) owns the Dove trademark for soap
Both products can be purchased:
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By the same customer
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In the same store
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For roughly the same price …
I can buy a bar of Dove soap at Walmart for $1.47
I can also buy a Dove chocolate bar at Walmart for $1.97
How can Dove chocolate and Dove soap coexist?
Well, here is how …
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Both these brands were created a long time ago
(when there was no internet, fewer brand names and many fewer lawyers,
so less litigation and less possible confusion) -
They are used for two very different products which
are registered in two different classes at the USPTO -
Their packaging, colors, trade dress & marketing are very different
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Both Mars & Conopco actively protect their trademark rights
by doing a lot to mitigate consumer confusion
And Dove is not unique, the same name is often used by different companies.
Fox example, take the name Odyssey in the US:
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Odyssey is a TM for clothing by Odyssey Boat Works
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Odyssey is a TM for a line of luggage from TRAVELPRO
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Odyssey is a TM for a cologne by Avon
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Odyssey is a TM for a pesticide from Helena Holding Company
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Odyssey is a TM for cheese & yogurt spreads from Klondike Cheese Co.
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And the list goes on and on …
So back to the question, “Can I use the same name as another company?”
Legally, the answer might be “Yes” … as long as there isn’t likely confusion.
Unfortunately, this confusion is much harder to avoid today:
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There are many more products and companies, hence many more names
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There are many more places to buy stuff
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There are some “places” you can buy almost anything
(I am embarrassed by how much I spend on Amazon but it’s just so easy!) -
Social media makes it so easy to create confusion that you can’t control
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There are a lot of hungry lawyers out there to remind you of this
But to build a strong brand, do you really want to use a name used by another company?
Maybe it’s OK:
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If they are in a totally different category
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If they have no SEO or social media presence
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If they are just a small, local company that you’ll never bump into
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since you can’t find any other name that you really like
However, just remember that uniqueness & differentiation are usually elements of a strong brand
When you aren’t sharing the same name with others:
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You are starting from a safer place legally
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You less likely to create confusion
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Your messaging and communications are more effective and less expensive
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It is simpler and faster to create brand loyalty
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You are in control of your own destiny
rather than riding of the coattails of another brand with the same name
or suffering the embarrassment when they do something dumb and everyone thinks it was you
We’ve been doing naming for almost 40 years
and would love to help you come up with your own great name
so you don’t have risk sharing it with others.
Just give us a call at 512.267.1814 Email us at mike@namestormers.com / ashley@namestormers.com or go to our website: www.namestormers.com
Original Post – April 24, 2020
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
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.
Seniority
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.