Can You Trademark Words That Are the Same as a Competitor's Product Name in Unrelated Markets?

In today's competitive business environment, some entrepreneurs and companies consider leveraging existing brand names, especially if their products or services operate in completely different markets. For example, Delta Airlines, Delta Dental, and Delta Faucets share a similar name, yet they operate in entirely different industries. This raises an important question: Can you trademark a word that is the same as another company's product name if both products or services are not in the same market?

Differences in Market and Protection

Differences in market segmentation can often provide a buffer against confusion. According to the same principle employed by Delta Airlines, Delta Dental, and Delta Faucets, even if two companies operate in unrelated sectors, they can use similar names without encountering confusion among consumers. This is due to the distinct nature of their products and services, along with their use of different trade dress colors and logos. Consumers understand that one product does not imply an association with another.

Impact of Fame and Notoriety

However, fame and notoriety can play a crucial role in trademark protection. If a word mark is sufficiently famous and widely recognized by the general public, it may be protected against trademark dilution. This means that the mark's fame can prevent other companies from using it, even if their products or services are unrelated. For example, Kodak, DuPont, and Buick are well-known brands, and even if a new company wanted to sell pianos, shoes, or aspirins under their names, they would likely face legal action. The desirability of brand names such as Nike, which is synonymous with footwear, serves as a stark reminder that similar names can lead to legal repercussions.

Challenges in Identifying Famed Brands

Identifying famous brands can be challenging, as the criteria for fame and notoriety are subjective. Federal dilution legislation recognizes trademarks that are 'famous' and 'widely known by the general consuming public in the United States.' However, determining whether a brand qualifies as famous can be difficult. Businesses should err on the side of caution and avoid using names that are already in use, even if other products operate in unrelated markets.

Importance of a Unique Brand Identity

Entrepreneurs should think carefully about using existing brand names, regardless of whether the markets are unrelated. A unique and original brand name not only helps establish a distinct identity but also avoids the risk of being perceived as a copycat. For instance, starting a computer company called Apple or a ride-sharing company called Uber would likely face significant backlash, despite the fact that their respective markets (computers and transportation) are unrelated to the original brands.

Conclusion

While it is possible to trademark a word mark that is the same as another company's product name in unrelated markets, careful consideration and legal consultation are essential. Entrepreneurs should strive to create unique and original brand names that are distinct and aligned with their company's values. This will help prevent legal disputes and ensure a positive public image.