Can I register a company name in the US if there is another company in the EU with the same name?

Answer 1

The use of a company name in one country does not, de facto, bar the use of that same company name in another country. Thus, one is able to register a company name in the United States ("US") even if there is a company in the European Union ("EU") with that same company name.

This is the general rule.

However, there are several factors to be considered in such a case which may cause derogations from the general rule, such as Trademark, Brand and Market Presence, and the Potential to Cause Confusion Among Consumers:

Trademark

When you create your company in the United States, your company name will be recorded on the corporate registry of the state and locality in which your company was formed by the Secretary of State (of the state concerned; this Secretary of State is a state, and not a federal, official).

In the United States, you may also register a trade name with the trademark office of a specific state, as well as with the United States Patent and Trademark Office ("USPTO") at the federal level. A trade name may or may not be the same name that a company has recorded on the state corporate register at time of formation. For the purposes of the present case, we are going to assume that the trade name and company name are the same.

If the foreign company in question, in this case a company from the European Union, has already trademarked its company name in the United States in the territory in which you desire to register your company name and conduct business (federal or state), then you would not be able to use that same company name in the United States.

Trademark registration and protection is territorial. Thus, if the EU company has not trademarked its company name in the US territory (federal or state) in which you desire to register your company name and conduct business, then you may still use that same company name in the United States.

Moreover, it is important to remember that trademark protection actually extends from use in the United States, and not registration. Thus, if the EU company has already been using its company name in order to conduct business in the United States in the same territory in which you desire to register your company name and conduct business, but has not yet formally applied for trademark registration of its company name in that territory, you will likely still be precluded from using that same company name in that territory.

If your registration and use of that same company name in the US territory in question was pre-existent, however, the situation would be different. You could seek to protect your use of that company name in the US territory in question. If the EU company later formally applied for trademark registration of their company name in the disputed US territory (federal or state), you would also have the right to protest their trademark application as a person with a valid interest.

If, after proper due diligence, no obstacles are presented by trademark issues in the United States, and you successfully register and trademark your company name in the relevant home territory, you must still consider what might happen if you decide to expand your corporate activity internationally. Trademark registration in the United States will not protect your trademark in a foreign territory. If at some point you desire to conduct business in the EU, and register your company name with the European Union Intellectual Property Office (EUIPO), you will immediately encounter a problem.

Brand and Market Presence

Following the above discussion of trademark matters, and particularly the extension of trademark rights from use in the United States, and not only formal registration, you should carefully consider the branding and market presence of the EU company concerned in the United States prior to establishing a company with the same name in US territory.

Is the name and branding of the EU company recognizable nationally in the United States or in the specific US territory in which you would like to conduct your business?

Does the EU company operate on US territory in the same market or industry in which you would like to conduct your business in the United States?

Does the EU company deal on US territory in the same type of products as the company which you seek to register in the United States?

If the EU company in question 1) has national presence in the United States or is operating in the same territory in which you would like to register your company using the same company name, 2) is operating in the same market or industry in which you would like to conduct your business, and 3) is dealing in the same type of products as the company which you seek to establish, then you will likely encounter a problem using the same company name as the EU company in the United States. Moreover, your application to trademark this company name in the United States would likely be denied.

Potential to Cause Confusion Among Consumers

Finally, building upon the above-mentioned considerations of trademark, branding, and market presence, one must also consider the possibility of confusion between the EU company and any US company registered with the same name, specifically among consumers.

If both companies will be dealing under the same name, in the same US territory, in the same market, with similar product offerings, then potential for confusion among consumers will be high. In such a case, your application to trademark this company name in the United States would also likely be denied.

In light of the above, prior to registering a company name in the United States that is already in use in a foreign country or territory, such as the European Union, you should carefully research 1) whether or not the foreign company in question has already trademarked its company name in the United States, 2) whether or not this foreign company already has global branding and market presence in the United States, and 3) whether or not the company which you seek to establish in the United States will deal in the same industry and products as this foreign company in a manner likely to cause confusion among consumers.

Conducting the proper due diligence before registering a company name and seeking to have that company name registered as a trade name with federal and state trademark offices can save you potential future heartache, particularly if that company name is already in use in a foreign country or territory.