A trademark, when tethered to a good/service, serves the essential purpose of enabling a consumer to immediately understand the source of that good or service. The electronics giant, Samsung, is a fantastic example of a company that utilizes its trademarks to build brand enormous brand trust. When an individual sees the Samsung logo on a mobile phone, he/she assumes that the phone is a worthy product because it has the Samsung logo on it. Powerful brand recognition can make or break a company and it is critical for a business owner to protect its brand.
DETERMINING THE AVAILABILITY OF A TRADEMARK SEARCH BEFORE BETTING ON IT
In order to obtain Federal trademark protection in the United States, an applicant must file a trademark application with the United States Patent and Trademark Office (USPTO). However, merely submitting a trademark to the USPTO will not automatically grant trademark rights. If the proposed trademark is deemed to be too sufficiently similar to an existing trademark, given the proposed goods/services in the application, the trademark examiner will reject the application. Thus, it is critical for an applicant to first conduct a trademark clearance search of the name.
Conducting a trademark clearance search before filing the trademark application reduces, but can never fully eliminate, the probability that the proposed trademark will be rejected by allowing the applicant to either select a new name, when presented with an existing problematic mark, or alter the trademark in order to obviate the problem of “Likelihood of Confusion” with the identified, existing trademark.
WHAT IS A TRADEMARK CLEARANCE SEARCH?
Remember, if a proposed trademark is too similar to an existing trademark vis-à-vis the goods/services each respective trademark is assigned too, a “likelihood of confusion” will be said to exist and therefore the junior trademark will not be eligible for protection.
For example, if a new shoe company applied to trademark the phrase, “Just Do This”, the USPTO would very likely reject the application because of the chance of “Likelihood of Confusion” with the Nike company’s phrase, “Just Do It.”
Thus, fundamentally, a trademark clearance search is a review of trademarks held by other entities in the same or a related industry. The goal of a trademark clearance search is to identify possible conflicts between the proposed trademark and any already protected by trademark registration. If there are similar trademarks already in use, judgments must be made about how likely it is for a consumer to be confused as to the source of the goods when tethered to the new mark.
TRADEMARK DILUTION
A lesser known, although equally important concept in trademark law is the concept of Trademark Dilution. Even if the associated goods/services of the proposed trademark are completely unrelated to the goods/services of an existing trademark, the proposed trademark may still be rejected if the existing trademark is famous. For example, imaging if an applicant wanted to obtain the trademark GUCCI to use in conjunction with the sale of tires. Even though it would be inconceivable to suggest that a consumer would think that THE Gucci company is behind the sale of the tires (the likelihood of confusion test), using such a ubiquitous brand name in conjunction with something as prosaic as tires is somehow inappropriate and may tarnish the Gucci name. Thus, the tire company’s application for Gucci would very likely be rejected. A trademark clearance search can help identify these lesser known, but still, sufficiently famous marks in advance.
KEY FEATURES OF A TRADEMARK CLEARANCE SEARCH
Remember, the crux of trademark law is consumer confusion; if the proposed trademark is sufficiently similar to the existing mark, vis-à-vis the applied for goods/services, the mark will be rejected. So, how should one conduct the search? First, input the mark directly as it appears; if the desired mark is Alpha, the applicant should type in the letters, A-L-P-H-A.
However, there are multiple phonetic variations for many trademarks, all of which must be searched. For example, a person who is interested in the mark ALPHA should also input the letters A-L-F-A. Similarly, a search of the word variant A-L-F-A-H would be prudent. If all of the variations are not searched, the likelihood of the trademark’s rejection increases.
Next, it is critical for the search to account for similar, although not explicitly congruent, goods/services as those being applied for in the trademark application. For example, if a person’s application called for the protection of a mark vis-à-vis computer software, the applicant should also search for marks in the category of downloadable mobile apps which may ostensibly be different than the applicant’s product but from the USPTO’s perspective, sufficiently similar to trigger consumer confusion.
CAN A CLEARANCE SEARCH ACCOUNT FOR UNREGISTERED TRADEMARKS?
Unregistered trademarks may still be protected under the doctrine of Common Law Trademark rights. Even if an individual has not obtained a Federal Trademark registration from the USPTO, merely using the trademark in commerce can provide a rudimentary amount of protection in the geographical location where the mark is in use. For example, if Zendop Cleaning Bros provides cleaning services in Brooklyn, New York, despite the fact that it has not registered “Zendop Cleaning Bros” in the USPTO, no other cleaning service may use its name in the Brooklyn, New York area.
Searching for Common Law trademarks is unfortunately more challenging than simply working through the USPTO’s trademark registry. For example, an applicant may look for existing domain name registrations, sift through industry-related journals, scan AP Press Releases and research any other related medium to identify existing, but not yet registered marks. Again, the objective is to identify any company/individual that may have senior rights to the same or similar trademark in the new, proposed trademark application.
TRADEMARK CLEARANCE SEARCH; KEY TAKEAWAYS
Prior to submitting a trademark application, it is critical for the applicant to ensure that no sufficiently similar, existing marks are already in use. To do this, focus both on the similarity of the proposed mark and on the goods/services to be sold under the mark. Ultimately, only the USPTO examiner can make this determination but at least having a good sense of one’s chances in advance can save a lot of time, money and aggravation.
Abe Cohn is an attorney at Cohn Legal, PLLC, a law firm designed specifically to provide a boutique experience for entrepreneurs.
