Does a Trademark Prevent Naming Something?

by Shelly Morgan
Thousands of different trademarks are displayed in a modern supermarket.

Thousands of different trademarks are displayed in a modern supermarket.

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You’re surrounded by trademarks every day. For example, the names Pepsi, Coke, RC Cola, Merry Maids all define specific goods or services. These trademarks help eliminate potential confusion among consumers when they are confronted with similar goods. If your trademark is registered with the United States Patent and Trademark Office, you may be able to exclude others throughout the country from using your trademark to identify similar good or services.

Infringement

Trademark infringement occurs when someone uses a mark similar to one already registered with the USPTO to identify a similar product. Under these circumstances, a mark is said to have infringed upon another registered trademark. The owners of registered trademarks can bring legal action to prevent and stop another party from using a trademark already in use. Such lawsuits can be expensive; if a party has willfully infringed upon the trademark of another, he may be liable for up to three times the amount in lost profits or damages, whichever is greater, and legal costs.

Trademark Search

You can minimize the risk of infringement by searching the trademark database of the USPTO to see if a similar mark has already been registered and what types of products it is used to identify. If nothing similar exists, you may consider registering your mark.

Litigation

Lengthy litigation between Apple Inc. and Apple Corps shows how owning a registered trademark does not prevent others from using a similar mark for different goods. Apple Corps and Apple Inc. spent several years enmeshed in litigation aimed at preventing each other from using the Apple trademark. The court found that Apple Corps could not prevent Apple Inc. from using the Apple trademark to identify computers and related peripheral equipment. However, Apple Inc. could not use its trademark for the sale of music because it was similar to products offered by Apple Corps.

Criteria

The USPTO has specific criteria for determining when two marks are so similar they might cause the consumer to be confused. The sound of the mark when spoken, similarity in appearance and commercial impression, and the relatedness of goods or services are all taken into consideration. If these elements are sufficiently alike, consider using a mark different from one already registered.