Searching a Trademark

Before adopting or using any trademark, we strongly recommend that TrademarkAuthority conduct a trademark clearance search in order to reduce business risk.

Note – there is nothing preventing you from proceeding directly to filing; however, you run a serious business risk due to prior marks or non-distinctiveness of the proposed mark.  Searching significantly reduces these business risks.  The main business risks are Defensive (likelihood of confusion) and Offensive (Distinctiveness and Strength of the Mark).

Defensive

Searching determines if your company can adopt and use the mark without infringing any prior third party trademark rights.  The test for trademark infringement is called the “likelihood of confusion” analysis. Courts and the USPTO apply a multi-part test, but the three most important factors are:

• Does your mark create a similar overall commercial impressions in sight, meaning, sound or connotation to a prior mark?  Note – the marks do not have to be identical and minor spelling differences may not matter;
• Are your goods and services “related” in marketing channels or purchasers?  Again, the products or services do not have to be identical, but merely related in some manner; and
• How strong is the mark?  Whether the mark is descriptive or inherently distinctive, as well as the number of similar third party marks on the USPTO Trademark Register and/or used in U.S. commerce.

Offensive

Searching also determines whether your proposed mark is weak or strong, and thus protectable and enforceable against third parties.  In other words, is your mark “inherently distinctive?”

• Can you enforce your mark against third parties?
• What is the scope of protection for your mark – is it broad or narrow?
• Will you have the ability to expand to different product or service categories?

Assessing Business Risk

Case-by-Case Basis – Trademark availability is all about business risk.  Trademark law is relatively straight forward – the rules of the game are pretty much set; however, determining whether a mark creates a likelihood of confusion or not is highly subjective and is decided on a case-by-case basis.  There are always arguments for or against.

As a Rule of Thumb, when assessing the overall business risk in deciding whether to adopt a mark or not in cases where availability is not obvious, we recommend applying the “IF I WAS IN THE OTHER PARTY’S SHOES” ANALYSIS – Ask yourself, if you were the other company, would you have a potential claim against your present company for adopting the mark?  Of course, there are many additional factors in deciding whether a mark may or not be available, including the strength of the mark, third party use, relatedness of the goods and/or services, whether the competitor is the 800 lb. gorilla; however, using the Rule of Thumb is a great common sense tool to help make a difficult decision.