If competitors can use that term in their marketing, why can’t we?” This is a phrase often uttered by marketing teams as they select new trademarks for use by their company. The problem for in-house counsel or a company’s trademark attorney is when the mark that is selected or preferred is part of a crowded field of similar third-party marks. Even worse is when the marketing or executive teams create pressure to adopt the mark and begin commercial use. While each situation is different and often very fact-sensitive, this article is intended to help you navigate this potential minefield in light of recent caselaw and, indeed, make the abundance of third-party trademarks work to your advantage in the trademark registration context. While there are other factors to consider in the context of a use analysis, there are overlapping factors in both situations, and this caselaw may also be helpful in analyzing whether there is a potential infringement.

Your first response to the marketing team should generally be to try to select a different, more distinctive trademark. For a host of reasons (including the potential for greater customer goodwill, easier brand enforcement, etc.), a more distinctive, less descriptive trademark is usually the preferred option. Choosing a mark in a crowded field can make the consumer’s job more difficult and increase the likelihood that your company will end up in an expensive and time-consuming trademark dispute. It can also increase the likelihood that the United States Patent and Trademark Office (USPTO) will object to your application based on one or more of those prior marks.

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