How to Approach a Trademark Conflict When Another Brand Owns the Mark

When you discover that a competing brand already owns trademark rights in your target market, you are dealing with a territorial trademark conflict. Because trademark rights are jurisdiction-specific, you must follow a structured approach to determine whether expansion is possible and on what terms.

Below is a step-by-step framework used by franchisors, global brands, and IP attorneys.

1. Determine the Type and Strength of the Other Party’s Trademark Rights

Trademark conflicts are not all equal. Start by determining:

Is the mark federally registered?

In the U.S., a USPTO federal registration gives nationwide priority.
In other countries, national registration gives strong exclusivity.

Is it registered only regionally/state-by-state?

In the U.S., state-level registrations exist, but are much weaker than federal registrations.
In some countries (Canada, India, EU), federal registration is required and regional registration is limited.

Is the owner using the trademark in commerce?

Non-use can weaken or void rights.
Many trademarks are abandoned after a few years.

Why this matters:You may be able to prove:

The other party has not used the mark,
Has abandoned the mark, or
Only has limited jurisdictional rights.

This can open the door to filing your own application or negotiating a coexistence agreement.

2. Conduct a Full Clearance Search (Not Just a USPTO Search)

A true clearance search checks:

Federal USPTO database
State trademark databases
Common law use (websites, social media, business filings, retail presence)
Domain names
WIPO/International registries (if expanding globally)

This creates a complete picture of real risk.

A competitor may own a registration but:

Not use it consistently
Use it in an unrelated category
Operate in a geographic area where confusion is unlikely

These facts matter when you negotiate or litigate.

3. Assess Your Options Based on the Risk Level

Once you know the full story, there are five main strategic options:

Option A: Buy the Trademark Rights

This is the cleanest option if:

The other brand is small or inactive.
They’re open to selling the mark.
You need full rights for franchising.

Franchisors do this often.

Option B: Negotiate a Coexistence Agreement

A coexistence agreement sets terms that both brands agree to.

A coexistence agreement might include:

Different logos or taglines
Limited geographic boundaries
Different product/service categories
Commitments not to enter each other’s specific channels

This is common globally when brand names overlap.

Option C: Localized Rebranding (Name Variation)

Many successful brands use different names in different regions due to trademark conflicts.

Examples include:

“Burger King” called “Hungry Jack’s” in Australia
“Taco Bell” rebranded some local menu names in India
“Carl’s Jr.” known as “Hardee’s” in Eastern U.S.

You keep your branding strategy but adjust the name slightly.

Option D: File for Cancellation or Opposition

If the other party:

Is not using the trademark
Has abandoned it
Filed in bad faith
Registered descriptively or generically

You may be able to challenge their registration.

This is especially effective when:

You have strong evidence of prior use internationally.
You have used the mark before them in cross-border commerce.

Option E: Rebrand Before Expansion

Sometimes the cleanest long-term solution is a controlled rebrand on your timeline, not forced by legal action.

Brands that rebranded early often scale faster afterward because:

Their IP is fully owned
Their mark is clean and strong
Investors and franchisees feel more secure

4. Build a Trademark Strategy for Multi-Country Expansion

Whenever expanding into a new country, best practice includes:

✔ File for trademarks before publicly announcing expansion

This prevents local “trademark squatting.”

✔ Register in key classes (services and merchandise)

Restaurants, consulting, education, consumer goods → all need specific classes.

✔ Use the Madrid Protocol for easier international filings

This covers over 120 countries from one application.

✔ Monitor and enforce your mark

Stop infringing use early, before you franchise.

Examples of Brands That Overcame Trademark Conflicts and Still Expanded Successfully

Here are real-world proof points from global franchising and brand expansion.

1. Burger King → “Hungry Jack’s” in Australia

When Burger King tried to open in Australia, the trademark “Burger King” was already owned by a local fast-food shop.
Result: Burger King adopted the localized name Hungry Jack’s (owned by their Australian franchisee).
Over time, Hungry Jack’s became one of the strongest franchise brands in Australia, nearly as recognizable as Burger King globally.

Lesson:When the core brand name is blocked, use a controlled rebrand and still scale effectively.

2. Carl’s Jr. vs Hardee’s

CKE Restaurants bought “Hardee’s” but discovered the “Carl’s Jr.” brand had inconsistent trademark availability across the Eastern U.S.
Instead of forcing uniformity, they kept two names with unified branding and operations.

Lesson:Dual-branding works when trademark conflicts make full standardization difficult.

3. Starbucks’ Trademark Battles in India (Prior to Entry)

Starbucks faced years of trademark disputes with local cafés using confusingly similar names (“Starstruck,” “Starbucks Shoppe,” etc.).
Starbucks filed opposition claims, negotiated settlements, and secured the rights needed to enter the Indian market.
Eventually partnered with Tata to build a compliant market strategy.

Lesson:Opposition + negotiation is a powerful expansion strategy.

4. Dunkin’ Donuts (Dunkin’) Trademark Regional Issues

Dunkin’ faced regional trademark ownership issues in several countries during expansion.
In some areas, they purchased regional trademark rights.
In others, they modified their branding or product classes to avoid conflict.

Lesson:Flexibility and business negotiation often solve trademark conflicts faster than litigation.

5. BurgerFuel (New Zealand) U.S. Expansion Conflict

U.S. trademark for “BurgerFuel” was owned by a different party.
The brand morphed and pursued alternate trademark strategies, including:
This allowed them to eventually secure operating rights in multiple territories.

Lesson:Creative legal + brand strategy can overcome blocked marks.

6. Taco John’s vs Taco Bell (“Taco Tuesday”)

Taco John’s had owned the trademark “Taco Tuesday” for decades in many states.
Taco Bell launched a national campaign to challenge the trademark.
Under pressure (legal + public), Taco John’s eventually relinquished the mark in the U.S.

Lesson:Even long-held regional trademarks can be challenged if:

They’re descriptive
Use is inconsistent
Public/legal pressure mounts

7. Zara vs “Zara Food Store” in India

When fashion giant Zara entered India, a small grocery store held the “Zara” trademark in certain classes.
Zara negotiated coexistence and limited-class agreements.
Today, Zara operates widely in India through a joint venture.

Lesson:You may not need full trademark control if you can clearly separate commercial categories.

8. Chick-fil-A and “Eat More Kale” Dispute

Chick-fil-A attempted to stop an artist selling shirts that said “Eat More Kale” (due to similarity with their “Eat Mor Chikin” slogan).
After years of dispute, the USPTO sided with the artist, and Chick-fil-A did not get exclusive rights.

Lesson:Even large brands cannot always enforce marks if the prior user has valid rights.

Practical Guidance for a Growing Brand Facing Trademark Conflicts

If your brand plans to franchise or expand:

✔ Step 1: Conduct global clearance early

Before franchising or entering new markets, ensure name availability in: