If Someone Else Has Registered My Exact Brand, Can I Still Use It As A Trademark?

My last video about LOL as a trademark prompted some questions about the availability of LOL as a trademark. Recall that Proctor & Gamble in applied to register the trademark LOL for a variety of cleaning products, including dish soap, hard surface cleaners, and air fresheners.

One of my viewers stated, “My local newspaper Lancaster Online has been using LOL for probably two decades – I’m sure they tried to register it too – P&G is not going to be able to get away with it. It’s now common language around the world.”

This statement assumes two pretty common myths: First, that if  mark is registered, then it’s necessarily unavailable for others to use. Second, that a word that is in common usage is not capable of serving as a trademark. I’ll address both of these, and in that order.

As to the first issue, just because a mark is registered for certain goods doesn’t mean that it’s necessarily unavailable to use as a trademark on other goods. This is why, for example, we have UNITED AIRLINES, UNITED VAN LINES, and UNITED PARCEL SERVICE. Yes, these all use the word UNITED, but on different goods. The goods are so different from one another that there is not a likelihood that a consumer would be confused when confronted by the marks. We look at the experience of the consumer in the context of the marketplace; a consumer would not expect commercial airline services, household moving services, and package delivery services to come from the same company, and the same company doesn’t tend to provide all three of these services. So those brands may co-exist in the marketplace without confusing the consumer.

Similarly, the mark LOL is registered for pet food, computer software, cigarette paper, and wine. Those marks can co-exist for those goods without consumer confusion because those types of goods do not tend to “emanate from the same source.” The consumer wouldn’t expect the same company to produce those goods, and so would not be confused if confronted with the LOL brand on those different goods.

As to the second issue, anything can serve as a trademark, even commonly used words. There are many examples of this sort of usage: JAGUAR, APPLE, BELL, ANDROID, and GALAXY are all commonly used words, and all are registered trademarks. As long as the marks are not being used with, respectively, jaguar breeding, apple carts, bell sales, robots, and outer space, companies are free to use those marks. So long as the trademark in question in the context of the goods and services being offered, is not “generic” or “descriptive,” it will be allowed registration.

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