Can you trademark a name that is not unique?

Jul, 23 2023

Understanding Trademark Basics

Before we delve into the core topic, it's important to understand what a trademark is. A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services of a particular source. Trademarks help to distinguish your business and its products or services from others in the market. They give you exclusive rights to use a certain name or logo in connection with your goods or services.

What Does it Mean for a Name to be Unique?

Many people assume that a name has to be completely unique to be trademarked. However, uniqueness in the context of trademark law does not necessarily mean that the name has never been used before. Rather, it means that the name is not likely to be confused with existing trademarks in the same or similar industry. So, a name does not have to be completely novel or invented to be considered unique for trademark purposes.

Can You Trademark a Non-unique Name?

The short answer is yes, you can trademark a name that is not unique. But the longer answer is it depends. There are some key factors that the United States Patent and Trademark Office (USPTO) considers when deciding whether to grant a trademark. These factors include the likelihood of confusion with existing trademarks, whether the name is descriptive of the goods or services, and whether the name is generic.

Evaluating Likelihood of Confusion

The USPTO evaluates the likelihood of confusion by considering how similar the names are and how closely related the goods or services are. If consumers are likely to mistakenly believe that the goods or services come from the same source, then the USPTO may refuse to register the trademark. So, even if a name is not unique, it can still be trademarked if it is not likely to be confused with existing trademarks.

The Problem with Descriptive Names

One of the challenges in trademarking a non-unique name is that it may be considered descriptive. Descriptive names describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. The USPTO typically does not grant trademarks for descriptive names unless they have obtained secondary meaning.

Understanding Generic Names

Generic names are the opposite of unique names. They represent common, everyday names for goods and services and cannot be trademarked. So, if a name is non-unique because it is generic, it cannot be trademarked. For example, you cannot trademark the term "Apple" if you are selling apples, but Apple Inc. was able to trademark it for computers and electronic devices.

The Power of Secondary Meaning

As mentioned earlier, even descriptive names can be trademarked if they have obtained secondary meaning. Secondary meaning occurs when consumers have come to identify a name with a certain product or service over time. For example, while the term "sharp" is a common word in the English language, it has obtained secondary meaning in relation to electronics and appliances due to the Sharp Corporation.

How to Prove Secondary Meaning

Proving secondary meaning can be challenging and usually requires substantial evidence. This could include consumer surveys, sales data, advertising expenditure, and any other evidence that shows the name has become a distinctive identifier of your goods or services. It is often wise to consult with a trademark attorney in these cases.

Conclusion: Navigating the Complexities of Trademark Law

As you can see, trademark law is complex and the answer to whether you can trademark a non-unique name is not straightforward. It's possible, but it depends on several factors. If you're considering trademarking a name, it would be wise to consult with a trademark attorney to understand the potential challenges and how to overcome them.