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).
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:
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?”
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.
TrademarkAuthority is a service exclusively licensed to Pearl Cohen Zedek Latzer Baratz LLP ("Pearl Cohen"), an intellectual property law firm located in New York, NY, that provides personal and expert trademark and copyright legal services covering the U.S., Europe, Canada, Australia, Mexico, Japan, China and many other countries throughout the world. This Web site may be considered Attorney Advertising. The information provided on this site is not legal advice, but general information on legal issues relating to trademark searching and registration. Prior results do not guarantee a similar outcome.
TrademarkAuthority was founded by an expert trademark attorney and former U.S. Trademark Office Examining Attorney who has over twenty-two years experience representing clients on a variety of trademark and copyright law issues. Our legal services include trademark searching, filing trademark applications, responding to USPTO Office Actions, filing Statements of Use, representing clients before the U.S. Trademark Office, Federal and State courts, maintaining trademark registrations, monitoring, policing and enforcing trademark rights and filing copyright registrations.