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Two Applications Filed Same Trademark

What if Two Companies File for the Same Trademark?

Maaz Shareef

Maaz Shareef

08 January 20254 min read

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What if Two Companies File for the Same Trademark?

Building a strong brand requires more than just a great name or logo—it demands legal protection to prevent disputes and ensure exclusivity. However, many businesses make the mistake of applying for a trademark without first conducting a thorough trademark search, leading to conflicts with existing marks.

A proper search helps avoid legal disputes, trademark infringement claims, and costly rebranding efforts. This guide will walk you through the trademark search process, covering everything from federal and state trademark databases to common law sources and international trademark searches. Whether you're using a search engine, hiring a trademark attorney, or navigating the USPTO's registration process, understanding these steps will ensure your brand is fully protected before filing.

The early bird gets the worm

When two applications are filed for the same trademark, the relevant trademark office, such as the United States Patent and Trademark Office (USPTO), evaluates priority—who filed first or demonstrated a bona fide intent to use the mark in commerce.

Priority often boils down to these critical factors:

  • Filing date: The application with the earlier date usually takes precedence.
  • Actual use: If one applicant has been using the mark in interstate commerce, they may hold superior trademark rights under common law.
  • Intent-to-use basis: For applications filed with an intent to use, proving a legitimate commercial plan strengthens claims.

Once two trademark applications are submitted, the USPTO assigns an examining attorney to review them. This process includes:

  • Checking for identical or similar marks already filed.
  • Issuing an office action to clarify conflicts.
  • Evaluating whether the marks cover similar goods or services within the same class.

At this stage, the USPTO determines if both applicants can coexist or if their trademarks would cause consumer confusion.

Conflict resolution

Trademark disputes may escalate if both applicants refuse to back down, leading to legal proceedings or negotiations. The resolution process can involve multiple steps, including:

  • Opposition proceedings: When a trademark is published for registration, another party may file a formal objection if they believe the mark conflicts with their existing rights. This does not automatically resolve the dispute but initiates a legal challenge.
  • Trademark Trial and Appeal Board (TTAB): If the opposition proceeds, the TTAB reviews the case, examines the evidence, and ultimately decides which party has superior trademark protection.
  • Negotiations or settlements: To avoid costly legal battles, parties often negotiate agreements, such as coexistence agreements, licensing deals, or voluntary withdrawals.

While some disputes are settled through litigation, many are resolved through negotiation, allowing businesses to find mutually beneficial solutions while protecting their trademarks.

Can two businesses share the same trademark?

Surprisingly, yes—but only under certain conditions. 

Both trademarks may coexist peacefully if the goods and services are unrelated or target different markets. For instance, a business name registered for software can coexist with a restaurant name if its customers are unlikely to overlap.

Tips to avoid trademark disputes

Trademark conflicts can be costly, time-consuming, and disruptive to your business. Preventative measures can help you avoid legal challenges and protect your brand’s identity. Here’s how to safeguard your trademark before filing:

A comprehensive trademark search is the first and most important step in avoiding disputes. By using trusted trademark checkers, you can identify potential conflicts before filing. This search should include:

  • Federal trademark databases, such as those maintained by the USPTO.
  • State trademark databases, especially if your business operates regionally.
  • Common law sources, including business directories, domain name registrations, and social media platforms, where unregistered marks may be in active use.

By thoroughly vetting your mark in all these areas, you reduce the risk of trademark infringement claims and unnecessary legal disputes.

2. Consult a trademark attorney

A trademark attorney can assess risks, determine likelihood of confusion, and help navigate the trademark registration process. They also assist in handling potential disputes, ensuring that your application is strong and defensible.

3. File early and accurately

Submitting your trademark application as soon as possible secures priority over later applicants. Ensure accuracy by selecting the correct trademark class, providing a precise description of your goods or services, and submitting the required proof of use.

4. Monitor and enforce your rights

Once registered, actively monitor your trademark to prevent unauthorized use. Use watch services, send cease and desist letters if needed, and enforce your rights to maintain trademark protection. By following these steps, you can significantly reduce the risk of trademark disputes and ensure your brand remains legally protected.

Real-world examples of trademark conflicts

Here are some fascinating cases of businesses battling over the same mark:

Apple Corps vs. Apple Inc.: The Beatles’ record label, Apple Corps, and tech giant Apple Inc. became embroiled in a long-standing legal battle over the use of the name “Apple.”

The dispute, which began in the late 1970s, focused on whether the two companies could coexist under the same name without causing confusion. Over the years, multiple settlements were reached, with Apple Inc. eventually securing the rights to operate under the name of its technology ventures. The matter was finally resolved in 2007, with an agreement that allowed both entities to continue using the name in their respective industries without further conflict.

Burger King vs. Burger King (Illinois): This quirky case involved a local Burger King in Mattoon, Illinois, that trademarked its name before the global fast-food chain expanded into the area. When the larger Burger King tried to operate near Mattoon, a legal battle ensued. In 1968, a court ruled that the global chain couldn’t use the “Burger King” name within a 20-mile radius of the local restaurant. Outside of this limited area, the global chain retained full rights to the trademark.

Louboutin vs. Yves Saint Laurent: This legal battle between luxury fashion houses centered on Christian Louboutin’s signature red soles. Louboutin sued Yves Saint Laurent (YSL) in 2011, claiming trademark infringement after YSL released a shoe with red soles. The court eventually ruled in favor of Louboutin, affirming that the red sole is a distinctive trademark when contrasted with the rest of the shoe. However, the ruling also clarified that YSL could use red soles if the entire shoe were red, highlighting the nuances of trademark rights.

Securing your trademark rights the right way

When two businesses file for the same trademark, the outcome depends on priority, usage, and legal proceedings. While the trademark office examines applications to determine who has superior rights, disputes can escalate into trademark infringement claims, opposition proceedings, or settlements. A reliable trademark checker can help identify conflicts early, but filing a trademark application requires strategy to ensure your trademark registration is approved without issues.

That’s where Trademarkia comes in. Our platform simplifies the trademark filing process with an advanced trademark search engine, helping you avoid unnecessary conflicts. Plus, our experienced trademark attorneys handle everything from application preparation to office action responses, ensuring a smooth registration process. For non-U.S. residents, hiring a U.S. trademark attorney is mandatory when filing with the USPTO. Even for U.S. citizens and residents, the USPTO strongly recommends hiring an attorney to navigate complex legal requirements, reduce rejection risks, and maximize trademark protection.

Don't let a trademark dispute derail your brand’s future. Start your trademark registration with Trademarkia today and safeguard your business with expert legal support.


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Maaz Shareef is based in our Nagpur office. He's an advocate turned legal content writer with a knack for making intellectual property law accessible and engaging. With experience working alongside U.S. attorneys, he brings a global perspective and a passion for clear, impactful communication.