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Robert McEwen, Esq.
Robert McEwen, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 11688
Experience:  Licensed Texas General Practice Attorney
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Can you trademark the name of a business that others share

Customer Question

Can you trademark the name of a business that others share if they have not done so already? I search through the USPTO and could not find any examples of the name I would like to TM. It's pretty specific, so there isn't any room for misspelling or interpretation. The first such use of the name is XXXXX XXXXX few years old, probably 2 or 3.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Robert McEwen, Esq. replied 1 year ago.

Robert McEwen, Esq. :

Thank you for using JustAnswer. I am researching your issue and will respond shortly.

Robert McEwen, Esq. :

In short, yes, you could, but the companies that have been in operation prior to your registration could continue to operate. That is, your trademark would not be valid against their "common law" trademarks (trademarks that arise by operation, rather than by registration. You will have the presumption of ownership and priority of claims, and can certainly stop any future uses by new companies or further expansion by existing ones. But "common law" trademark rights will still have priority.

Robert McEwen, Esq. :

A good way to explain common law trademark rights is like this:
Suppose there was a company called "Pizza Hut" that served pizzas, but is not connected with the multi-billion dollar corporation that operates under the name and registered trademark "Pizza Hut". But the first Pizza Hut started the business before the second one ever registered the trademark, in Deluth, MN, and just never registered its own. In this instance, the first Pizza Hut can still operate, even though it does not have a registered federal trademark, because it had common law trademark rights. But the thing is that it cannot expand its business. It can continue to operate in the same geographic locale, but cannot expand to a new one./

Robert McEwen, Esq. :

So in short, a previously operating but unregistered company can claim common law rights, but only with the already existing geographic locale where it was conducting business. Otherwise, you would be able to stop any expansion of existing businesses or new businesses trying to use that name.

Robert McEwen, Esq. :

Hope that clears things up a bit. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, XXXXX XXXXX luck to you!

Customer:

Got it. So essentially, if I register my name now, the other businesses cannot expand their market?

Customer:

What limits does that place on certain things like marketing and adveritising. Would they be allowed (if they have not been doing so currently), to expand into social media, advertise via Google AdWords, FB, etc?

Robert McEwen, Esq. :

That's correct. As for social media, etc... that's a bit more complicated (and something that has not really been addressed by the courts). In short, they could argue that their market is nationwide if they've had a substantial presence on the internet, but that would be a bit difficult. Ultimately they'd be limited to what they've been doing before your registration, and anything that they do differently to expand their market could be challenged by you.

Customer:

Ok. I will be the first to foray into this particular field, using this particular monicker. There isn't an internet presence for what I am doing as I am the first to bring this product to the public. I just want to make sure I protect myself from someone else.

Customer:

If I were to register it, I could prevent any NEW entities from creating a business with that same name yes?

Robert McEwen, Esq. :

Understood. Hope that clears things up a bit. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, XXXXX XXXXX luck to you!

Robert McEwen, Esq. :

Yes.

Customer:

Cool. Thanks for the help Robert

Robert McEwen, Esq., Lawyer
Satisfied Customers: 11688
Experience: Licensed Texas General Practice Attorney
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