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Can Two Companies Have the Same Trademark?

Daniel Mills, Trademark Attorney

Posted Monday, October 26, 2015 by Daniel Mills

The answer to this question depends on the specific circumstances. In order to understand the complexities of the circumstances, it is important to remember that the key purpose of trademarks is identify the source of the goods and avoid confusion over the source of goods. One of the main questions the USPTO considers in allowing registrations is whether there is a likelihood of confusion over the source of the goods or services.

What if the goods or services are different?

Generally speaking, if the goods and services are different enough, then there is reason to allow the same mark because the average consumer would not confuse the source of the goods. Consider the mark EZ CLEAN. There are currently 10 live registrations for this mark. The goods associated with the mark include wheel sprockets, pool cleaning chemicals, airbrushes for applying paint, anti-graffiti coating, kits for solidifying medical waste spills, and machine tools for cleaning oil and gas well drilling equipment. This wide variety of goods illustrates the point nicely. Is anyone likely to think that the EZ CLEAN mark associated with cleaning well drilling equipment is from the same company making anti-graffiti coatings - not likely.

What if the goods are the same or very similar?

Under certain circumstances a single mark can be used by two companies in the same or similar class of goods under the concept of concurrent use. There are two conditions that must be met before concurrent use will even be considered:

  1. The use of the lawful use of the mark began before the filing date of the existing marks application.

  2. The continued use of the mark will not result in confusion, deception, or mistake.

So the first question is who began using the mark in commerce first. If an applicant has been using a mark before the filing date of an existing trademark registration, then there may be concurrent use. If the answer is no, then there can be no concurrent use.The second question whether the continued use will cause confusion is answered by applying limitations to the use. The most common type of limitation of use is based on location or geographic region where the companies operate.

For example, consider a mark that will be familiar to many in the Northwest - THRIFTWAY. There are currently two registrations for THRIFTWAY for Grocery Store services. One is restricted to an “area comprising the state of Washington, excluding Clark county and a 30-mile radius surrounding the city of Longview Washington and a 30-mile radius surrounding the city of White Salmon, Washington.” While the other is restricted to an “area comprising the state of Oregon, the county of Clark in the state of Washington, a 30 mile radius surrounding the city of Longview, Washington and a 30 mile radius surrounding the city of White Salmon, Washington.”There are other limitations based on the mode of display or a restriction on specific goods or services but these are rare and usually part of court orders as part of a dispute settlement.

Ruttler Mills PLLC
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