This is a great, but loaded, question that I thought best explained as fully as possible in a post. As a trademark lawyer, I am often asked about scenarios such as this, where one entity wishes to trademark a name but is somewhat uncertain about whether or not they are able to do so when there is a similarly-worded trademark within the same class.
As you would expect, there is no one-size-fits-all answer to this question. Indeed, a detailed review of the current trademark and any connected activities should be undertaken. This could include determining whether the existing trademark is currently being used, promoted, or advertised. If the trademark is old, and there is no active use or promotion, and hasn’t been for a substantial period of time (generally 3-5 years), then this could open up the potential possibility for another to use the mark as a result of Trademark Abandonment.
Another element to consider is that if there are other similar names out there for related products. For instance, if you want to register a trademark for a new energy drink called Refresh & Renew and there are already energy drinks registered for Renew Plus, Daily Renew, Energy Renew, 365 Renew, etc. each owned by a different company, the fact that there are numerous registrations including ‘Renew’ would usually indicate that consumers can tell the difference between the products and adding your Refresh & Renew to the list would not be cause for consumer confusion.
What is Trademark Abandonment?
Generally speaking, if a trademark is unused for at least three years, then there is a presumption of abandonment by the mark owner. However, this might not always be as clear-cut as it sounds, and indeed, there have been cases where there was a genuine intent to re-use a mark and this was subsequently proved in court, which results in the ‘abandonment’ being overturned. However, in the event that the current trademark owner pushes back, there is a certain amount of subjectivity that can be expected with the process.
If you have tracked down the owner of the trademark in question and obtained their written permission before proceeding, this could help you handle any potential future legal issues more easily. However, it could also result in the trademark owner raising unnecessary objections, potentially, for their own financial gain.
Tread Carefully with Trademarks
As a trademark attorney and intellectual property lawyer, I always urge anyone who finds themselves in a situation in which they are unsure of whether their use of a mark constitutes infringement, to speak with a trademark attorney to get advice and seek counsel on the specificities of the case in question. This can very often give you the foundational information needed in order to rule in, or out, the potential success of a trademark application.
For more information or to receive personalized guidance on any aspect of trademark registration, call us at (888) 666-062. You can either schedule a consultation in person at our Charleston, SC office, or we can have a consultation on the phone or online.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.