Can I use that trademark? Maybe.

Share on:

We have a client who wants to name and register a trademark for his new business. For confidentiality reasons, let’s say the name he wants to register is “Alpha 1 Global Marketing.”

The problem is that there are already many “Alpha 1” trademarks in various classes, which is how goods and services are organized in order to ensure an orderly trademark process. For example, there’s an “Alpha 1 Global” mark in Class 35 (Advertising and Business), which is the class that the company would register in.

Can or should the client try to use the name anyway? It’s a difficult decision, with no cut and dried answer. Below are some of the complex issues to consider:

1. Since there are already so many Alpha 1 marks registered in Class 35, can’t our client register one more?
Answer:
Maybe.
The United States Patent and Trademark Office (USPTO) may allow numerous registrations in the same class if it believes there will not be customer confusion. But multiple registrations in the same class will weaken the protection rights of all the owners. This is why prior registrants need to be vigilant. Even if the trademark office allows a new application, prior registrants can object—and often do. This can result in legal costs, delays in launching the name, or even worse, the need to pull the name after launch.

Implication: Decide if you’re ready for the risk.

2. Our client’s mark has added the descriptor “Global Marketing” as part of the name. Isn’t this enough to distinguish this from other Alpha 1 marks?
Answer: Maybe.
If the description of goods and services is narrow enough, the USPTO might accept the new application. However, prior owners of the Alpha 1 mark may challenge this decision, claiming that there will be confusion in the marketplace. Also, even if the registration is accepted, at best it’s a weak mark. This means that our client will have a hard time blocking other future Alpha 1 applicants.

Implication: Consider if you will be comfortable long term with a narrow right to usage.

3. There’s a well-known Alpha 1 brand for clothing. This is a different class and shouldn’t matter, right?
Answer: Maybe.

Alpha 1 Shoe

Generally, a trademark in one class won’t bar a new registration in a different class. But, the clothing company might be aggressive. It may claim that the new registration is piggy-backing on its “pre-existing brand recognition.” Sometimes, however, there is no challenge.

Implication: If the existing mark is well known, it would be a good idea to have a conversation with its owner. This was probably the case with Motorola RAZR phones and Callaway RAZR golf clubs.

4. What if our client doesn’t register the mark to avoid USPTO rejection? Is this a smart course of action?
Answer:
Maybe.
Given that there are already numerous Alpha 1 marks in existence without litigation, maybe nobody will come after our client.

Implication: You will have to live with the uncertainty.

So what did we tell our client? Our advice was that he should talk to his attorneys and get an expert assessment of risk. Better safe than sorry in the murky world of trademark law.

Jeff Lapatine is group director, Naming and brand architecture, for the Siegel+Gale New York office.

Let's talk about

Request a meeting