If I use a trademark that I cannot register, can I prevent others from using a similar mark?

Generally, you cannot prevent others from using trademarks that you have not registered. There are certain words you may be able to adopt as a mark for your own use, even though you may not be able to register them as trademarks, and doing so may prevent others from using the same or similar marks. One of the important benefits of registering a trademark is that you may be able to legally prevent others from using it.

Options for Registering a Trademark

Before using a trademark that you cannot register, weigh all of your options and consider seeking the advice of a trademark attorney. This is not a decision to be taken lightly. If your product or service becomes successful, you will want to exclude others from copying not only your idea but also your name or trademark.

If your trademark cannot be federally registered, there are still two options available for registering trademarks. These options include local registration and secondary meaning. Trademarks can be registered at the state level instead of the federal level. If the business for which the trademark was created is only meant to be local, then local registration may be the best option for you. Local registration is less stringent than federal, and the search database is smaller. However, local registration will only protect trademarks in the state where they are registered. If someone in California finds your Arizona registered trademark and wants to use it for their local business, they will be able to use the trademark freely.

Using the Secondary Meaning Exception to Register a Trademark

The secondary meaning exception is a back door approach to registering trademarks with the federal registration office. Under 15 U.S.C. 1052, trademarks may be considered distinctive if they have become associated with a product through active use that has continued for at least five years.

In other words, if you advertise your trademark and product so actively and consistently that the public associates your trademark directly with your product, the director of trademarks must register your mark. This exception requires years of hard work as you advertise using the trademark and establish your product with the public, but it has worked for many successful companies including ChapStick and Kleenex.