Patent Attorney and Founder
Question
Can I register “Commercial RE Academy” if someone in a nearly identical business has already registered “Commercial Academy”? I’m launching an e-learning website focused on commercial real estate. I’ve been using the name “Commercial RE Academy” for nine years but recently discovered that someone else has a registered mark for “Commercial Academy” and has been using it longer than me in almost the same service. This sounds like it could be a problem. What do you think?
Answer
Matt: That’s an interesting situation. After doing some diligent searching online, it seems like this other person has a strong claim to first use. It’s possible they got early advice, which helped them secure the trademark. I would agree that they have a pretty solid position.
Matt: Regarding your name, you could consider adding your personal name to it, like “Brian Peto Commercial Academy.” If you file an affidavit with the USPTO, you can give yourself permission to register your name as a trademark, which is usually allowed.
Matt: However, “Commercial Academy” itself seems really descriptive to me, but I’ll check to see if it’s registered. It turns out it is registered, but it’s on the supplemental register, not the principal one. This means their trademark is currently unenforceable in terms of registration rights. Since it’s on the supplemental register, they can’t enforce it against “Commercial RE Academy.” However, after five years of continuous and exclusive use, they could potentially reapply to have it registered on the principal register. At that point, enforcement could become an issue.
Matt: As for “Commercial RE Academy,” it wouldn’t necessarily infringe on their trademark because of its current status on the supplemental register. Additionally, “RE” as an acronym could be registerable unless it’s considered a common acronym for real estate. If it is, the USPTO might deem it descriptive of a commercial academy for real estate.
Matt: Overall, I think there’s a better name out there for you. When clients come to me with concerns about whether a name is too descriptive, that usually signals that a better name exists, and it’s worth exploring other options.
JD: That advice was definitely worth it—thanks! So, to summarize, the current trademark is unenforceable, but there’s a possibility they could enforce it down the road if they gain principal register status. Meanwhile, I should consider looking for a different name.