• February 2020
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Can I Trademark the Same Word or Word Mark as Another Company in a Different Industry?

lawtrades brand name trademark

Trademark protections are legal tools designed to safeguard business-related creative words and images which help to distinguish companies and their products. Without such safeguards in place, numerous individuals and companies would almost certainly attempt to infringe upon the intellectual rights of other companies in order to influence consumers and turn a profit. Trademarking one’s branding and advertising-related logos, words, phrases and images helps to ensure that consumers are not confused about which company has produced the goods and/or services they are being asked to purchase. This legal tool may also help to build and sustain brand loyalty, which is a critical economic force within numerous industries.

However, when one company trademarks a word or phrase, there are legal limits to the safeguards any given trademark may afford that company. For example, in 1986, the Coca-Cola Company trademarked the slogan “Catch the Wave.” The slogan was often publicized with a logo featuring the company’s name, the slogan itself and a boxy wave graphic. The phrase “Catch the Wave” was widely associated with the soda company at that point in time. However, as time passed, the slogan went out of fashion as the Coca-Cola Company evolved its advertising campaigns. Nowadays, if a surf shop embraced this slogan and sought to trademark it, it is unlikely that either the Coca-Cola Company or the U.S. Patent and Trademark Office would take issue with that development. There are circumstances under which it is possible to trademark a word or phrase that has already been trademarked by a different company in a different industry.


Words Versus Word Marks

It is important to understand that the treatment of registered trademarks associated with words and phrases tends to be less strict than the treatment of registered trademarks associated with so-called “word marks.” Unlike a simple word or phrase that could be reasonably utilized by different businesses in different industries, word marks tend to be distinct, unique expressions of a company name or product name. Specifically, word marks are specialized typographic treatments of these names used specifically for branding and identification purposes.

If asked directly, most Americans could probably name at least a dozen word marks immediately after being asked to list them. Many would cite the familiar scrawl of Walt Disney as represented in the treatment of the Disney name. Others would point to the multicolored treatment of the word “Google” as displayed on the site’s home page. Still others would name the friendly bubble-like, orange and pink letters used by the Dunkin’ Donuts corporation. When a business uses very specific, stylized typography to identify itself or its products, that visual may be trademarked as a registered word mark. It is much harder to trademark a word mark that has been previously registered by another company, even if that company competes in a different industry, simply because word marks serve as unique, distinct branding tools in ways that more common words and phrases rarely do.


When “Repeat” Trademarked Words Are Legally Acceptable

There are many examples of words that have been trademarked by more than one company across a varied array of industries. There are even reputable profitable companies that share the same name. Perhaps the most famous example of name-sharing is “Delta.” Both the airline and the faucet manufacturer are well-known and well-respected by the general public. But because the goods and services they provide are so different, it is difficult to mix them up for the purposes of advertising and branding. Nevertheless, it is critically important to conduct a global trademark search in order to check for existing registered trademarks before committing to a name, advertising word or advertising phrase, as not all duplicates are legally acceptable.

Your intellectual property attorney will be able to discuss how to trademark a word or phrase that may have duplicate protections in another industry. If it is unlikely that the public would associate your word or phrase with the goods or services advertised by the company that currently possesses a trademark for the same word or phrase, you may be able to secure legal protections. It is for this reason that word marks are not treated in the same way. If a company that sold ice cream wanted to use the Google word mark, consumers would be understandably confused by the associations, even though ice cream sales and search engines are connected to two very different industries.


Intellectual Property Guidance Is Available

If you are interested in securing trademarks for your business, please know that the trademark application process is notoriously complex and time-consuming. The nuances of that process are also strictly enforced by the U.S. Patent and Trademark Office. The intellectual property attorneys at LawTrades has extensive experience navigating this process successfully and would be happy to help you achieve your intellectual property goals.