Someone Else Registered Your Trademark? Here’s What to Do
You have been using your business name, brand name, product name, or slogan for years. Then you search the federal trademark database—or receive a cease-and-desist letter—and discover something alarming:
Someone else filed a trademark application for your name.
Or worse, they already obtained a federal trademark registration.
Does that mean they own the name? Do you have to stop using it? Can you challenge their trademark?
Not necessarily.
In the United States, trademark rights generally arise from use of a mark in commerce—not simply from being the first person to file a federal trademark application. If you were using the trademark first, you may have valuable prior rights and, depending on the circumstances, options for challenging the other party's application or registration.
But timing matters.
Someone Trademarked My Business Name. Do They Own It?
Not automatically.
A federal trademark registration provides significant legal benefits, but registration alone does not necessarily defeat someone who established earlier trademark rights.
If you were using the name before the other party, the first question is usually who has priority.
Determining priority can involve questions such as:
When did you first actually use the trademark in commerce?
What products or services were sold under the mark?
Where were those products or services offered?
Has your use been continuous?
When did the other party begin using the mark?
When did the other party file its trademark application?
Did the other party file based on existing use or an intent to use the mark?
How similar are the parties' respective goods or services?
The answers can significantly change your legal options.
What Should I Do If Someone Filed a Trademark for a Name I Already Use?
1. Do Not Immediately Stop Using Your Name
Discovering another party's application or registration does not, by itself, mean you must immediately abandon a brand you have spent years building.
Before changing your name, taking down your website, responding to a demand letter, or agreeing to stop using the mark, determine what rights you may already have.
If you were the earlier user, abandoning the name unnecessarily could mean giving up significant brand value.
2. Find Out Who Used the Trademark First
Priority is often the critical issue.
Trademark priority usually depends on actual trademark use—not simply who thought of the name first.
Evidence of earlier use may include:
Sales records and invoices
Dated advertisements
Website archives
Product packaging and labels
Social media posts
Contracts and customer communications
Photographs
Press coverage
Trade show materials
Domain and website records
Other documents showing the mark being used to identify your products or services
Simply registering a domain name, forming an LLC, or thinking of a name generally is not the same thing as establishing trademark use.
That distinction can become extremely important in a priority dispute.
3. Check Exactly What the Other Party Filed
Do not stop at the trademark search result.
Review the actual USPTO record and determine:
What mark did they apply for?
The marks may not be identical.
What goods or services did they claim?
Trademark rights do not give someone ownership of a word for every conceivable purpose.
When did they file?
What first-use dates did they claim?
Was the application based on actual use or intent to use?
Has the application been approved?
Has it been published for opposition?
Has it already registered?
The answer to that last question can determine what procedural options are still available.
Can I Oppose Someone Else's Trademark Application?
Potentially.
After the USPTO approves an application, the mark is generally published in the Official Gazette before registration.
A party who believes it would be damaged by registration may be able to file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB).
There is a limited period to oppose an application after publication, although extensions of the opposition deadline may be available.
An opposition is an administrative proceeding before the TTAB. Depending on the circumstances, an earlier trademark user may argue that registration should be refused because the applicant's mark is likely to cause confusion with the earlier user's mark.
If you discover a potentially conflicting application during the opposition period, the deadline should be evaluated immediately.
What If the Trademark Has Already Registered?
Registration does not necessarily mean the dispute is over.
Depending on the facts, it may be possible to seek cancellation of a federal trademark registration through a proceeding before the TTAB.
The grounds available for cancellation can depend on several factors, including how long the registration has existed.
A registration can also become relevant in federal court litigation involving trademark infringement or other claims.
This is one reason it is important not to assume that a registration conclusively establishes who was the first trademark user.
Can Someone Trademark a Name I've Been Using for Years?
Yes, someone can potentially apply to register a name even though another business has been using it.
The USPTO does not independently investigate every business in the United States to determine whether someone has earlier unregistered—or “common-law”—rights.
That means a later user may obtain a registration even though another party has been using a similar trademark.
Whether that registration can be challenged, and what rights the earlier user retains, requires a separate legal analysis.
What If I Never Registered My Trademark?
You may still have rights.
Federal registration provides important advantages, but trademark rights can arise through actual use of a mark in commerce.
These are often referred to as common-law trademark rights.
However, the scope of unregistered rights can be more complicated and may depend on the geographic reach of the business and other facts.
This creates a potentially difficult situation: an earlier user may have priority in an established market while a later user obtains a federal registration that affects future expansion.
That is one reason businesses should consider federal trademark registration before a dispute develops.
Does Being the First to Form an LLC or Register a Domain Mean I Own the Trademark?
Not necessarily.
Business registrations, domain names, social media handles, and trademarks serve different purposes.
Forming ABC Brands LLC does not automatically give you federal trademark rights in ABC BRANDS. Likewise, owning abcbrands.com does not necessarily establish trademark priority.
Those records may sometimes help establish a timeline, but the central question is generally whether and when the name was actually used as a trademark in connection with goods or services.
What If the Other Business Is in a Different Industry?
There may not be a trademark conflict at all.
Trademark law does not necessarily prevent every other business from using the same word.
The question is generally whether consumers are likely to be confused about the source, sponsorship, affiliation, or connection between the parties' goods or services.
Two identical names used for completely unrelated products may sometimes coexist. Two somewhat different names used for highly related services may create a much greater problem.
The analysis depends on the particular marks, goods and services, customers, trade channels, and surrounding circumstances.
Preserve Your Evidence Before Contacting the Other Party
If you believe you used the trademark first, preserve your evidence before starting a confrontation.
Download invoices. Save dated photographs. Locate old advertisements. Preserve social media posts and website materials. Find contracts and customer correspondence. Identify people who can verify when and how the mark was used.
Evidence from years ago can disappear surprisingly quickly.
You should also consider preserving publicly available evidence concerning the other party's use.
Avoid altering or manufacturing evidence after a dispute arises. The goal is to preserve the historical record of what actually happened.
Should I Send a Cease-and-Desist Letter?
Maybe—but not before understanding your own position.
A demand letter can sometimes resolve a dispute quickly. It can also escalate a dispute, trigger litigation, or cause the other party to seek a declaratory judgment.
Before contacting the registrant, evaluate:
Priority. Who actually has the earlier rights?
Strength. How protectable is your trademark?
Overlap. How closely related are the parties' products or services?
Geography. Where has each party actually operated?
Registration status. Is there a pending application, opposition deadline, or existing registration?
Business objective. Do you need the other party to stop completely, or could coexistence work?
Legal strategy should follow the business objective—not the other way around.
Your Options When Someone Else Registers Your Trademark
Depending on the facts, potential strategies may include:
Filing your own federal trademark application
Filing a Letter of Protest in an appropriate pending application
Requesting additional time to evaluate a published application when permitted
Filing a TTAB opposition
Filing a petition for cancellation
Negotiating a consent or coexistence agreement
Sending a demand letter
Negotiating limitations on the other party's use or registration
Pursuing or defending federal trademark litigation
There is no single correct response to every trademark priority dispute.
Sometimes aggressive enforcement is necessary. Sometimes an agreement protects the client's business more efficiently. And sometimes the evidence shows that no action is warranted.
I Was Using the Trademark First. What Should I Do Now?
Start by answering five questions:
1. When did you first use the trademark to sell or offer your goods or services?
2. What evidence can prove that date?
3. When did the other party begin using the mark?
4. What exactly does the other party's trademark application or registration cover?
5. Is there a deadline approaching at the USPTO or TTAB?
Do not assume that the other party won simply because they obtained a registration.
But do not ignore the registration either.
The earlier the situation is evaluated, the more options you may have.
Talk to a Trademark Attorney About Your Priority Rights
If someone filed for or registered a trademark that you were already using, Katie Charleston Law, PC can evaluate the competing claims and help determine the appropriate next step.
Our trademark practice assists businesses and creators with trademark priority disputes, USPTO applications, TTAB oppositions and cancellations, enforcement, cease-and-desist matters, negotiations, and federal trademark litigation.
When evaluating a potential priority dispute, we can review the registration history, investigate the competing uses, analyze your evidence of earlier use, and develop a strategy based on both your legal position and your business goals.
If someone else has filed for or registered a name you were already using, contact Katie Charleston Law, PC to schedule a trademark consultation.
This article is provided for general informational purposes only and does not constitute legal advice. Reading this article does not create an attorney-client relationship. Trademark rights, deadlines, claims, and defenses depend on the particular facts of each matter.