Trademark Q & A: Can another company use our product name since we did not trademark it?
We released a product in 2020 - a line of antibacterial face masks called ArmorFlō (not a real name) and have been selling it from our website and on Amazon. Now a new company just released a line of anti-bacterial face masks using almost the identical name of Armour Flow. We did not trademark the name ArmorFlō. Do we have any right to ask them to stop using the name as it is almost identical to ours? We have had several customers tell us that they almost purchased the masks from the other company thinking they were ours. Thankfully, our masks are really beautiful and comfortable, so they could tell the difference when they looked closely and did not purchase the other ones.
A: Assuming you started using the mark "in commerce" first (meaning offering goods or services for sale in more than one state - like on a website, for example) and have used it continuously since the date of your first "use," then you have priority rights in the name and a common law trademark, even without a registered trademark.
However, without a registered trademark, you don't have the remedies you need to get them to stop using a confusingly similar or identical name.
The remedies you need are:
(1) The right to an injunction - this is where a court issues an order that forces the other party to stop using the infringing name;
(2) Money damages - they could be forced to turn over any profits they generated through the use of the name;
(3) Treble damages and attorneys' fees - if they knew about your brand or should have known about your brand, there is a chance you could succeed in a claim for intentional infringement. If you succeed, they would have to pay 3x the money damages AND your attorneys' fees and costs incurred in bringing a claim against them.
Without a registered trademark, you do not have access to any of the above. So reaching out to the infringing party now might not result in stopping them from using the name. It is a much harder battle (and more expensive).
As you can see, having a registered trademark is a very powerful tool in protecting your brand, your brand equity and your clients and customers. Well worth the investment to do it properly and as soon as possible.
I would recommend that you immediately engage an experienced trademark attorney to draft and file an application for federal trademark registration to get that process going before you reach out to the other party. Do it before they file their own trademark application to avoid a potential dispute and significantly more expensive process. If they file for registration first, it complicates things and you could have to go to court to litigate who has priority rights (even though you do if you used it in commerce first, you would have to engage in the litigation in order to prove it).