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Can you Trade Mark a word that is already in use for something?

by Byron2k12
12 replies
Just trying to get my head around this.

Let's say you search for a word on google "abcxxx" because you want it as a trade mark to sell "pens" online. With your search you find that "abcxxx" is a "manufacturer" of "pens" in your neighbouring country and they sell worldwide, they are called "abcxxx" and "abcxxx" is wrote on the "pens" they make and sell.

Now if you do every trade mark search possible and it turns out there is no trademark for this, can you then trademark the word "abcxxx" and register it as a domain to sell ordinary "pens" in your country?

Please understand what i am asking before saying yes or no because this is analogous to what i am working on, thank you.
#mark #trade #word
  • Profile picture of the author xInd
    Pretty sure that would depend on your specific country's rules and regulations.
    Why wouldn't you want to just come up with a unique name? Or explore the possibility of a partnership? IMO it's best to come up with your own ideas or work together, even if you are able to register a trademark because they haven't done that, you could end up with a lawsuit or legal headaches down the road.
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  • Profile picture of the author travlinguy
    This is a question for a lawyer specializing in trademarks.

    It's my understanding though, that if a company has given a popular product a particular name, it doesn't really matter whether they've got a trademark on it. If the people reviewing the application see that another firm has equity in a name, even without a trademark, they can deny your application.

    And if you somehow manage to get the trademark, the company in question has a certain time period where they can challenge it.

    This is what I believe to be true. I could be wrong. I'm not a lawyer. You need to the straight scoop from someone who actually does know. Good luck.
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  • Profile picture of the author WillR
    Please seek legal advice... not advice from strangers on a public forum.

    We can't be there to testify if you get into trouble.

    Seriously though, don't mess around when it comes to the law.
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    • Profile picture of the author Byron2k12
      Thanks guys, yeah just looking for some info before going to a trade mark attorney to slightly lower the huge fees they charge.

      Thanks again.
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      • Profile picture of the author Alexa Smith
        Banned
        Originally Posted by Byron2k12 View Post

        Thanks guys, yeah just looking for some info
        That's the problem, though, Byron, I think? You can't get "information" about it here: all you can get is guesswork and opinion from those unable and unqualified to offer "information" or to assess its relevance to your situation.

        http://www.warriorforum.com/main-int...al-advice.html
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        • Profile picture of the author davezan
          Tempting as it is to answer this, I kinda agree it's best to seek answers from a
          licensed and experienced attorney. Fortunately, some give a free consultation
          or so:

          Paul Keating Esq.

          Good luck, OP.
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          David

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  • Profile picture of the author helenbas
    I have been down this path several times in Australia and our rules are very similar to the US. As a general guide, you can't trademark a generic word that is used in everyday language. You can trademark your domain name and logo, but that doesn't give you total ownership of the word. For example, if you register weather.com as a trademark, then I come along and try to register wetweather.com with my logo I can still do that.

    Hopes this helps. Cheers
    Helenbas
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  • Profile picture of the author XponentSYS
    Originally Posted by Byron2k12 View Post

    Just trying to get my head around this.

    Let's say you search for a word on google "abcxxx" because you want it as a trade mark to sell "pens" online. With your search you find that "abcxxx" is a "manufacturer" of "pens" in your neighbouring country and they sell worldwide, they are called "abcxxx" and "abcxxx" is wrote on the "pens" they make and sell.

    Now if you do every trade mark search possible and it turns out there is no trademark for this, can you then trademark the word "abcxxx" and register it as a domain to sell ordinary "pens" in your country?

    Please understand what i am asking before saying yes or no because this is analogous to what i am working on, thank you.
    I'll answer this, being that it's understood that i am not a lawyer - I'm a MARKETER.

    I'm compelled to answer because i went through the same thing and I queried my brother, who is an attorney.

    In a nutshell, he said that one doesn't NEED to register a "TM" in order to secure a trademark.

    It depends on the country you're in of course, but in the US, *usage" of a phrase, word or term for a length of time constitutes a trademark. Doesn't matter if it's registered or not.

    If a business has been using a "name" or "term" in it's practice, and you come along and use the same term and they challenge you to a debate on a trademark, they'll win.

    My situation - I was trying to register the brand name for a Pizza Parlor and the domain name was being help by one of those squaters.

    I called my brother who told me the above.

    I challenged GoGaddy with it and won and forced them to give me the name.
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    • Profile picture of the author Byron2k12
      Originally Posted by XponentSYS View Post

      I'll answer this, being that it's understood that i am not a lawyer - I'm a MARKETER.

      I'm compelled to answer because i went through the same thing and I queried my brother, who is an attorney.

      In a nutshell, he said that one doesn't NEED to register a "TM" in order to secure a trademark.

      It depends on the country you're in of course, but in the US, *usage" of a phrase, word or term for a length of time constitutes a trademark. Doesn't matter if it's registered or not.

      If a business has been using a "name" or "term" in it's practice, and you come along and use the same term and they challenge you to a debate on a trademark, they'll win.

      My situation - I was trying to register the brand name for a Pizza Parlor and the domain name was being help by one of those squaters.

      I called my brother who told me the above.

      I challenged GoGaddy with it and won and forced them to give me the name.

      Thanks, there sure is quite a lot of info there, lucky you your own brother is an attorney.

      When you say held by squatters do you mean people/companies who just buy domain names so that when a time comes where another company/business person might need it they think they'll be able to sell it to them for a big price? Or is it something slightly different.
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      • Profile picture of the author shane_k
        Originally Posted by Byron2k12 View Post


        Thanks, there sure is quite a lot of info there, lucky you your own brother is an attorney.
        Sometimes this could be true, but remember not all Lawyers are alike or have the same knowledge.

        My fathers a Lawyer, but he doesn't specialize in this area, so I wouldn't think to ask him for advice about this topic or specialization. Nor would he want to give me advice on it.

        Especially when it comes to people living in different countries.
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  • Profile picture of the author Randall Magwood
    I would discard any thoughts or attempts to use a trademarked term or phrase in your URL. Just pick something else and market it like a rebel.
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  • Profile picture of the author sbucciarel
    Banned
    Originally Posted by Byron2k12 View Post

    Now if you do every trade mark search possible and it turns out there is no trademark for this, can you then trademark the word "abcxxx" and register it as a domain to sell ordinary "pens" in your country?
    A company does not have to file for a trademark for the trademark to be valid. The "First Use in Commerce" rule can apply, so just by establishing the company and using the trademark, they can make a case for the trademark.

    Filing for the trademark gives them additional rights to the trademark. Here's more info.

    Small business - Trademark Registration - Conduct a Trademark Search for Registered Trademarks - USPTO Stopfakes.gov
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