Can I trademark a name that already exists?

Jul, 31 2023

Into the Rabbit Hole of Trademarking

Sit down, fasten your seatbelt, and get ready to dive head first into the captivating world of trademarks and names. Pardon my propensity for the dramatic introduction; just trying to lighten up the atmosphere before we embark on our journey. You see, regarding the question "Can I trademark a name that already exists?", the thing is: it's easy yet complex, straightforward yet convoluted. Why? Because it's like being emerged in one of those classic 'who done it?' mystery novels, minus the scary cliffhangers.

Before we delve into the nitty-gritty, some light-hearted trivia. Do you know the most expensive trademark ever sold is Financial Times, worth $1.2 billion? Now you can drop this knowledge nugget into your next social gathering and rake in some 'oohs' and 'aahs', free of charge! Now, let's jump back to our query. The idea of trademarking an existing name stands on contradictory grounds. On one end, it clashes with the original objective of the trademark; that is, to distinguish goods and services of one business from others. On the other, there exists a labyrinth of intricacies and complexities.

International Classifications and You

The first factor to consider in this mesmerizing maze is the wonderful world of international classifications. You see, a name might already be trademarked, but only in one specific class of goods or services. That leaves you about 34 other product classes and 11 service classes to play around with if you're desperate to use that specific name. And there's more! The classification must match the goods or services for your brand. Isn’t that something to whet your intellectual appetite?

A quick disclosure though: these classifications can get pretty specific. For example, International Class 03 deals with cosmetics while Class 25 talks about clothing. So, keep in mind these distinctive categories before you excitedly embark on your trademark journey.

Navigating Through Geographic Boundaries

Next up, we've got our geographical boundaries. Let’s take it a bit easy here. No need for a world map or compass unless you are really into props. Just like classifications, trademarks also apply to specific geographic locations. That means you can trademark a pre-existing name in another region, provided it's not protected there. It’s almost like the world's playing a cheeky game of hide-and-seek!

Now here's the caveat: You need to have a legitimate use or bona fide intent to use that name in the place you're applying for the trademark. Otherwise, hello lawsuit potential! Just thought you should know about this landmine before you step on it.

The Plot Twist of 'Distinctiveness'

Time for another plot twist in our 'who done it?' mystery! Enter the concept of 'distinctiveness.' Even if a name already exists, it could potentially be trademarked provided it meets the criteria of being 'distinctive' or 'inherently distinctive.' And what does that mean, you ask? Well, it essentially refers to the unique quality of a name that helps it stand apart.

A classic example is Apple. What does a tech giant have to do with a fruit? Absolutely nothing, and that's the point! Because it makes no sense, it's distinctive. So, if you can prove that the existing name has a distinctive context in your line of business, voila! You can trademark it! Quite a roller coaster ride, isn't it?

The Tale of the 'Dilution' Ghost

And now, my friends, we've reached the final chapter in our thrilling escapade: 'dilution.' Personally, I feel dilution sounds more like a technical term used in chemistry. But the world of trademarking proved me wrong, it indeed likes words with a chilling ring. 'Trademark dilution' is essentially a legal concept giving the owner of a famous trademark standing to forbid others from using it in a way that would lessen its uniqueness.

The trick here is to be careful not to 'dilute' the trademark of someone else while trying to register an existing name. The terrifying tale of Tiffany (NJ) Inc. v. eBay is a story that still echoes across law classrooms, wherein Tiffany attempted to sue eBay for trademark dilution of luxury items. So let's not stir up any trademark ghosts and proceed with care, shall we?

Trademark: A Deep Dive

Finding your way through the forest of trademarking often feels like interpreting a cryptic crossword puzzle— mildly amusing, utterly baffling, but incredibly rewarding when solved. Overall, the key rule of thumb in the rollercoaster ride of trademarking an existing name is to stay aware, informed, and constantly updated. Always research thoroughly to identify any potential conflicts before submission. It’s safer to have your bases covered than to tiptoe around possible infringement.

Also, remember to maintain strong legal support throughout the process (My lawyer friend Luke would be overjoyed if I recommended him here. But, I am afraid I can't do that). Navigating through the labyrinth of classifications, geographic restrictions, distinctiveness, and dilution can become overwhelming. So, keep it light, stay calm, and move step by step. With due diligence and perseverance, you can successfully navigate this bewildering maze with panache. Oh! And remember to always appreciate the journey, because, in the thrilling world of trademarking, the journey is truly the destination.