Entrepreneurs need to be aware of three warning signs within the results of a trademark search.
Searching for possible trademark conflicts might seem unnecessary, but those of us who file trademark applications highly recommend it.
Remember, trademark rights in the U.S. are based on prior (first) and continuous (ongoing) use of the trademark, not the first to file in the trademark office (more formally: the United States Patent and Trademark Office, or USPTO). So, you can do a “quick and dirty” search of the www.USPTO.gov, specifically, the Trademark Electronic Search System (TESS), to see if there’s a conflict with your proposed trademark, but that’s not enough.
Sure, if you find a direct conflict with your trademark at the USPTO, because it is identical to someone else’s, that may rule out whether you should file for, or even use that particular trademark.
But, there’s at least two problems with relying on that quick search.
- First, your search might not be thorough enough. It’s hard to anticipate all the permutations of words which might be already filed, with similar but not exactly the same spelling, and designs that contain some of the words but not all of them, or designs for similar logos.
- Second, if you do get a direct hit on a mark that is very similar to your proposed mark, it may or may not matter if the goods or services are substantially different from yours, or that the trademark owner is unlikely to expand into your market of goods or services, since other factors, such as how well known the trademark owner is to consumers in the relevant market, may also be in play.
Still, a quick search of the USPTO costs nothing, and it can help you rule out a proposed mark or flag already registered trademarks for further research. But it cannot “rule in” or give a good faith basis to believe you have exclusive rights to use the mark.
To be more confident that your proposed mark will not likely be confused with someone else’s, a comprehensive search and report is recommended.
It better helps to predict both how you’ll do at the USPTO and how you might fair in the market. At the USPTO, a computer-generated search can go through a variety of permutations to find a larger number of potentially conflicting registrations or applications than a mere mortal. (Be advised: All searches are not the same! An online report from a website for non-lawyers, which a client once showed me, was so long and detailed with all possible variations on each word that it was impossible to use!)
A proper search report not only finds previously filed and registered marks but can also locate marks in use that have not been filed, as well as provide other information, such as what goods or services are sold in connection with the mark; who filed it; where the owner is located; and when the mark was first used. This information, by itself, can give you an idea of how strong or weak your mark may be.
A full search is also better because since trademark rights are based on using the mark, it is not necessary for a mark to be registered with the USPTO for an owner to have trademark rights as a matter of state or “common” (rather than federal) law.
Sometimes, in our excitement at coming up with a New Brand, we ignore warning signs that might be in the results of a trademark search.
Here are three warning signs:
1. That business in a different state?
It’s selling the same goods or services as you from its store front, and might also be selling on the internet, and that may mean it’s “engaging in interstate commerce” and is entitled to nationwide protection. Look into it.
2. That news report about a company that you thought was out of business?
Maybe it’s been dormant rather than dead. Look into it.
3. That domain name without a website?
Well, that’s not “use” as a trademark, so it isn’t a trademark problem yet, but moving quickly on the trademark application might be important before another business is launched before yours.
Some real-Life examples:
- I did a search on a mark for a kids’ awards show only to find that, outside of the USPTO, there were several such awards, offered in different states, bearing the same name. Because the search showed the client that he likely did not have exclusive rights to his proposed mark, he was compelled to come up with a new mark.
- Another client invented a name for a new technology. A search indicated that the technology had become so popular that the proposed mark merely described it, prompting us to advise the client to make the trademark more distinctive and, therefore, more protectable.
- A client wanted to register a trademark that included the same descriptive words as lots of other registered marks in the relevant market. We advised that modifying the mark even slightly could make the client’s mark stronger by making it more distinctive. The problem, however, was that by the time the client wanted to register its mark, it had already sunk a lot of money into a branding campaign to which the proposed trademark was critical. The lesson:It is a lot easier to take the time to consider how best to strengthen a mark before spending good money on a branding campaign.
So, getting a comprehensive search and report by someone with trademark experience can be important to developing a portfolio of strong trademarks that can help promote brand development.
About the author
Mark Kaufman, Esq. is a graduate of Amherst College and Columbia Law School. He has practiced law for over 25 years. He is the name partner of Kaufman & Kahn LLP, based in New York City. Mr. Kaufman has a broad-based business law and commercial litigation practice with a special focus on trademark and copyright law. He has been responsible for prosecuting, enforcing, and defending hundreds of trademarks and copyrights over the course of his legal career. He also has expertise in negotiating a range of agreements relating to the use, protection and licensing of intellectual property. He represents a range of clients, including artists, e-commerce companies, retailers, and publishers. Mr. Kaufman resides in Westchester County, New York.Website