Filing for a Trademark That Already Exists: What You Need to Know

Have you wondered if the name you intend to use for your business is already trademarked? Or if you can trademark the product or service driving your new business idea? Properly trademarking your company’s product or service is as important to your business as the development of the product or service itself. 

A quick note before we get started: Remember that a trademark differs from a copyright or patent. Patents prevent others from producing or selling a certain invention. Copyrights prevent others from plagiarizing original works of authorship. By contrast, trademarks protect the symbols, phrases, words, logos, or other means by which goods or services are identified or distinguished from competitors. (For more, see: Copyright vs. Trademark: What You Need to Know.)

Your company’s trademark is not so much about the ownership of a given set of words, colors, or images but rather the overall brand conveyed to your customers. The trademark is how your customers identify your goods and services, so you want to create the strongest, most original one you can. In the case of trademarks already claimed, this can sometimes just be a matter of figuring out how best to distinguish your trademark from others like it.

People can claim a trademark before they actually register it. In fact, the more they make use of the mark, the greater the likelihood that the U.S. Patent and Trademark Office (USPTO) will approve it. Trademark rights come much more from usage than from the actual filing for protection. This article will walk you through how to apply for a trademark that already exists and provide tips for navigating your trademarking journey smoothly.

Research your trademark name before filing

The USPTO reviews applications for trademark registration at the federal level. While you can apply for trademark protection for almost anything, the USPTO must approve it based on the trademark requirements outlined in the Lanham Act, the primary federal statute governing U.S. trademark law.

Before you apply, conduct a thorough trademark search to ensure your mark isn’t already in use:

• USPTO Trademark Database: Use the Trademark Electronic Search System (TESS) to check for similar marks.
• State Trademark Databases: Some trademarks are registered at the state level, so check state-specific databases as well.
• Common Law Searches: Businesses may have trademark rights even if they haven’t registered with the USPTO, so search business directories, social media, and websites for similar marks.

New for 2025: As of January 18, 2025, all USPTO trademark applications must be submitted through the Trademark Center, replacing the older TEAS system.

Grounds for denial of a trademark can range between many extremes. For example, trademarks can be denied if they are considered primarily geographically deceptive. If you were to try to register a trademark for the phrase “Boston’s Best,” but your company and its factory are based in Tucson, Arizona, that phrase suggests a misleading geographic area. Other reasons trademarks may be denied include:

• Ornamentation only
  • For example, if the trademark for “Boston’s Best” was used to trademark an everyday expression or a prominently displayed quote, it may be rejected.
• Primarily a surname
  • For example, if instead of “Boston’s Best”, the trademark was for “Garciaparra’s Best”, it may be denied.
• Merely descriptive
  • For example, just the word “best” is merely descriptive and would be rejected.
• Phonetic or other similarity to an existing trademark
  • For example, a trademark application for the “Boston Redd Socks” would be refused as it sounds too phonetically similar to the “Boston Red Sox”. 

As freelancing and consulting become more popular and more people focus on flexible work environments, it’s more important than ever to trademark items such as your logo or brand image. If you’re starting a boutique finance firm, you need to attract customers and have them remember your company amid the sea of other businesses like your own. 

No matter your industry, perform a trademark search on existing trademarks for logos, associated imagery, and company taglines, as this will help ensure that your brand sticks out from the crowd in the best way.

Recommended: Do I need to trademark my LLC name?

What to Do If Your Trademark Is Claimed

If you start the trademark application process and discover that the trademark you want is already in use, don’t assume you have to give up immediately. Here are four steps to take before making a final decision:

1. Consider the category of the existing trademark compared to your category

Trademarks are classified into 45 different classes based on the type of goods or services they cover. If a similar trademark exists, check whether it’s in the same class as your business.

• Example: If you’re trademarking a phrase related to wood treatments (Class 2) and a similar mark exists in the food industry (Class 29), you’ll likely still be able to register your mark, as the industries are unrelated.

The USPTO evaluates the “likelihood of confusion” when deciding whether to approve a trademark application. If two trademarks serve the same industry and target market, the likelihood of confusion is higher.

Examples of trademarks the Trademark Trial and Appeal Board (TTAB) found too similar to coexist:

• Magnavox and Multivox
• Mr. Clean and Mr. Rust
• Platinum Puff and Platinum Plus

To conduct a search, use the Trademark Electronic Search System (TESS) and filter by classification or design code to find existing trademarks similar to yours.

2. Look at when the trademark was first used, not registered

Business owners can, and very often do, use trademarks before they have formally registered them. They can then claim that trademark after the fact by proving they’ve used it for whatever duration since. In the trademark tongue, this is called claiming “first use.” Your rights to a given trademark start from the date of your first use, and you don’t have to have filed at that time for your trademark to be protected.

There are two types of first-use dates when proving your exclusive rights to an existing trademark. The “date of first use in commerce” refers to the first time the mark was used in conjunction with a sale of related goods or services. The “date of first use anywhere” refers to the first time this particular mark was used in any capacity relevant to your business.

When establishing first use, you’ll be asked to provide supporting documentation in the form of what the USPTO calls “specimens.” Specimens may be anything from a photograph of your company’s logo or tag on the goods to the packaging of your goods with the trademark on the packaging. 

Digitally altered photographs are not admissible as specimens; neither are items such as invoices or letterhead. Check these basic facts about trademarks to ensure that you can provide the right specimens for claiming your trademark.

3. Contest the existing trademark with the business

You can take several approaches if you think you own the right to a trademark already in use. Because trademark owners must supply the USPTO with consistent, updated proof in the form of a Section 8 Declaration of the trademark utilized for active commerce, you might start by checking when that trademark’s last statement of use was obtained.

Section 8 Declarations are expected after the fifth anniversary of your mark’s registration but before the sixth. Trademarks not updated are considered abandoned and up for grabs after that sixth anniversary. 

Trademarks have to be renewed every 10 years, so this means that if you find that the trademark you want has been (or will be abandoned) but is still in the official ownership of another business, you will have two options. You can pay to transfer a trademark or work with the current owner to license some or all of the rights to it. 

4. Seek legal help for claiming your trademark

Trademark infringement is a serious legal matter, and business owners sometimes pursue legal action to assert their rights. If you believe you have a stronger claim to a trademark, you may consider the following legal options:

• Petition to Cancel: If an existing registered trademark was abandoned or improperly registered, you can file a cancellation request with the Trademark Trial and Appeal Board (TTAB).
• Trademark Opposition: If someone else recently applied for a trademark, you can oppose the application within 30 days of its publication in the Official Gazette.
• Declaratory Judgment Lawsuit: You can file a lawsuit in federal court to request a ruling that your use of a trademark does not infringe upon an existing mark.

Just as with the establishment of first use, you’ll need to provide valid specimens proving your right to legal protections. Given the complexity of these legal challenges, it’s advisable to consult a U.S.-licensed trademark attorney before proceeding.

More Resources for Small Business Owners Filing for a Trademark

Trademarking can be a confusing process for many because they protect such a peculiar form of intellectual property. Make sure you consult with trademark professionals before you move forward in any trademark acquisition process. 

Also related: When is a Trademark Needed?