What To Do If Someone Else Registered Your Trademark First

What happens if someone else registers your brand as a trademark? First step: don't panic. It doesn't have to mean a rebrand. Tune in for 3 things to consider before throwing in the towel on your branding.

Key Takeaways

• Registering a trademark with the USPTO is the only way to truly own your brand across the US and make sure no one else can steal your name
• There are steps you can take if someone else registers your brand name first, but they're advanced strategies that usually require help from a trademark lawyer
• The first person to file the trademark application wins

Resources Mentioned

• Search your name on TESS, the USPTO search tool (gives direct hits only!)
• Learn more about trademark registration services
• Watch the free masterclass
• Follow Amy on Instagram @artfulcontracts

Next Steps

Thank you so much for listening! If you enjoyed this episode, please reach out and let me know by sending me a DM on Instagram @artfulcontracts

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Episode Transcript

What happens if you find out that someone else has registered your business name with the US Patent and Trademark Office? What happens if somebody else has the same trademark that you want to use, but they registered it first? That's what we're gonna talk about today. First step, don't panic and listen to this episode to find out what to do next.

Hey, I'm Amy Nessheim, licensed attorney for online business owners and founder of my own business, Artful Contracts. You're listening to Legal Made Easy, the show that makes the legal aspects of online business easy to understand and implement so you can grow your business with confidence knowing you've got it all covered. Let's dive in.

We haven't talked a whole lot about trademarks on the podcast before, but it is one of my areas of expertise. So I think we're gonna be diving into it a little bit more in some upcoming episodes, and we're probably going to get into the trademark process and why you might want to register a trademark. But today I wanted to start with this question of what happens if you find out if that someone else has registered your business name as a trademark, or even your course name, or any other aspect of your branding.

Alright, and before we get too far into this, I am babysitting my parents' puppy this week. I'm I like dogs, but I've never had a dog just to myself, and I've definitely never had a puppy just to myself, so safe to say we're struggling a little bit with keeping her entertained and quiet. So if you hear her little claws tapping around on the ground, or if she barks at me while we're recording this, sorry, heads up. Uh, I don't really know what to do about it. But I wanted my parents to have a good vacation and not worry about her. So here we are. And with that said, let's get into it.

So, first thing to know, and remember, is that trademarks, it's a type of intellectual property that just relates to your branding. A trademark is a word, a symbol, a design, a phrase, something that you put out there that customers see it and they recognize that you, your business, is the source of whatever item that branding is on. Another thing you need to understand is that registering your trademark with the US PTO is the only way to really own it. And once you register it, you have ownership across the US. And what that means is that you can get someone else to stop using your trademark if you find out they're using it.

On the flip side, if someone else registers first, it could be a problem. So that's what we're going to talk about today is if somebody reaches out to you and says, Oh, I saw this other business with your branding, or you hire a trademark lawyer, somebody like me, to do a search for you and they come back and say, Actually, this is already taken, or maybe you just look it up yourself. You can use the trademark electronic search system. It's a free software that the USPTO has, and you can search your business name on there. It only will come up with direct hits, but if you do get a direct hit, here's what you do next. The one more thing that's important to know is that trademarks, the standard for what's too similar is not if it's identical.

So something can be identical and that's a problem, yes. But if your name, if your business name or your course name, we're just gonna say business name as a shortcut, but it could be your slogan, your business name, your course name, any aspect of your branding. If your name is too close to somebody else's, if it's similar, even if it's not identical, that can also be a problem. That can also be considered infringing on their trademark. So it doesn't have to be identical for this to come up.

I've come across this situation with a few of my clients in the past, and the first thing I always say is don't panic. Even if something identical comes up or something that's super close comes up, and you find out that somebody else is registered, don't panic. There are some things you can do. So here they are. The first thing to do is to look at the class descriptions. Trademarks are registered based on the type of good or service that's being provided. So when you register a trademark, you only get protection in your field, in your niche, based on the goods or services that you're providing.

So, as an example, Dove chocolates and Dove Soaps can both exist and both own trademarks for the word dove because they have different classes, because one is in the food chocolate class and the other one is in the personal care goods soap class. So they can both exist. Same thing with Delta, Delta Airlines and Delta that makes faucets, they both can have a trademark for the word Delta because they sell totally different things.

So if you find somebody else with your same using the same word you use, the first step is to look at their class descriptions and see what goods or services they sell and see if you fall into the same category. So it's not necessarily just going to be identical items, classes are a little bit more broad than that. For example, class 41 is the education and entertainment class, and that means it covers everything from podcasts to YouTube channels to online courses to social content, all of that. Even if the content of the podcast isn't the same, if somebody has a podcast talking about spirituality and you have a YouTube channel talking about business coaching and they have the same name, that could be a problem because they're both in the entertainment and education class. Now, even if the classes are the same or similar, you can still get around this by limiting the classes that you register in so that they're different from the other person's registration. So if you offer a few different things, you could potentially register in a few different classes.

So with the example I just gave of those two podcasts, let's say someone else has registered their podcast for spirituality with the same name that you want, and you have a YouTube channel that sells your business coaching services, and one part of your business coaching services is about marketing. The marketing class is a separate class. There's if you provide services related to digital marketing, that's going to be class 35 instead of class 41. You can kind of strategically choose your classes that you register in so there's no overlap with the person who's already registered. That's not a guaranteed strategy, but it is one way that you can still move forward, even if that person already has something in a class that you might want.

The next thing to do is to check the application status. So when you search on tests, um, or if you have an attorney do a search for you, there's going to be applications that come up, not just registered trademarks. It's also going to be trademarks that have been applied for. And the application process takes about 14 months at this point. So it's totally possible that someone is in the application process and they have not been approved yet. So make sure you check that. And you can check the status of their application to find out if they just filed recently or if they're facing an office action, which is like a rejection letter from the USPTO that they may or may not overcome.

So I had this situation with one of my clients. We actually we filed, it was only like two weeks later than this other person who filed. Um, so it we didn't know about it because this other person filed in this time in between doing the search for my client and filing the application for the client. And it wasn't identical, it was a similar name, like there were a couple words different and they were switched in order. But we got a refusal from the USPTO saying, well, this other application filed first by two weeks. So you have to wait and find out if their application goes through.

That person did not have a lawyer representing them. They got a letter from the USPTO citing a few issues that if they had a lawyer, they could have solved, but because they didn't, they just didn't answer. So my client's application actually went through because the person ahead of them in line didn't follow through on completing and responding the way that they needed to to the USPTO. So their application fell through and my client's was actually approved.

So moral of the story there, if somebody is in the application phase, file anyway, save your spot in line, and then depending on how that per first person's application is resolved, you might be able to move forward anyway. Because a lot, like a large percentage of applications, especially if someone is filing without a lawyer, are rejected. So there's still a chance if you get in line, you're next and you actually get approved because that person ahead of you doesn't complete the process.

All right, the next thing that you can do is if someone has like their registration is not an application, it's fully registered, your classes are identical, there's no way around that. The other thing that you can do is just get consent. You can reach out to somebody and ask them for permission to use the same trademark, even though they've already registered it. And depending on your audiences and the areas you serve, they might be okay with that.

If your businesses are different enough that a regular person wouldn't be confused by it and that you wouldn't necessarily be like stealing customers from this other person, then that might work out. And then you can take that consent and you can file an application with the USPTO for that trademark, prove that you have consent from the other person and your application could go through. Now it might not, it's not guaranteed. Just because you have consent doesn't guarantee that the USPTO will be okay with it, because they have to evaluate on their own if having two of the same trademarks would be confusing for the general public.

But again, if you can prove that your channels of trade, if the way that you do business, if your geographic area is different enough that people wouldn't be confused, then you can get that application through. These strategies are all reasons that it's really important to have a lawyer working with you while you're going through the trademark application process.

Like I said, there are so many people who file on their own and then they just fail. I actually just talked to someone the other day who said she filed on her own, got that letter from the USPTO asking for clarification on some things that she hadn't done right, and she just gave up. And I've heard that story so many times from clients because they get to that point, they started it wrong, they can't go back and fix it because there are some things on the application you can't fix. The only way to fix it is to start from scratch.

And I'm actually working with another client right now who had that situation. She got pretty far along in her application, but it's not actually covering her because she didn't know how to write class descriptions the right way to actually protect what she wanted to do. So we're starting over from scratch to fix that. If you want to avoid all of the stuff I just talked about entirely, if you want to never have that situation where you find out someone else registered your business name as a trademark, the only way to avoid that is to file first.

The only way to make sure that you own your branding and no one else can use it is to file a trademark and to do that before anyone else does. So timing is really important. Like I said, I had a client who somebody else filed just two weeks before them. And that could have been really, really problematic if that person had gone through the process with a lawyer. Lucky for us, they didn't, but it was just luck.

So if you want to make sure that you own your branding and no one else can use it, the only way to do that is to register a trademark. And if you want to register a trademark successfully, I highly recommend you have a lawyer help you with it.

And this is actually one of the services that I offer. So if you want to hear more about that, head over to artfulcontracts.com/trademarks or send me a DM on Instagram with the word trademark and we'll talk through that process. Thanks so much for listening, and I'll see you next week.