“Branding” the product is a normal first step when introducing that product into the marketplace. A primary focus of branding is what to “name” it. The name will be used to promote the product. Intellectual property attorneys call this product name a trademark or service mark.
In a world filled with competitors, the choice of a trademark may have legal ramifications. The ability to freely use a trademark to promote the product now and in the future is paramount. Are there others using the same name, or a similar one? A trademark search will help resolve those issues.
What’s a Trademark Search?
There is a notion floating around that all one has to do is to search the U.S. Trademark Office’s publicly available database. If you get “no hits” there then all is well. If only things were that easy! A quick search of the U.S. Trademark Office’s publicly available database of trademark applications and registrations is a good starting point, but it is only a start – unless the quick search comes up with a direct “hit” that knocks out the proposed trademark.
What’s needed is at least a preliminary search or better yet, if the client can afford it, a comprehensive or full trademark search. A comprehensive search includes more sources than a preliminary search, such as state trademark registrations and a common law search for unregistered trademark usage. A trademark search, one that can be relied upon, is not the $99 special found on the internet. These could be considered preliminary trademark searches, but most do not come with a legal opinion component. So, the $99 special then has to be reviewed, analyzed and a judgment made (all of which is an additional cost) on a search that may not even qualify as a good preliminary trademark search.
Need a Plan
Before starting the search, the client should think about not only the immediate future, but the next four or five years. Will there be expansion of this brand (trademark) to other products or services? Will the product or service be exported? If so, the search should be expanded to look at future products and look into third party registrations and uses in other countries. It is surprisingly efficient to add some extra searching at this point, even if the client is not going to immediately do business in other jurisdictions.
For a small business, a comprehensive trademark search may be too expensive. A preliminary search limited to the U.S. Trademark Office database and a quick glance at the internet may be all that the client can afford. With a preliminary research, at least, immediate obstacles to use and registration can be identified and a decision made whether to go forward with the proposed trademark or step back and consider another alternative.
The search (even a preliminary search) must include identical trademarks, but should also review:
Similar trademarks, e.g., Woody Stout vs. Woody Wheat for beer;
Phonetic equivalents, which are sometimes tricky to figure out, e.g., easy compared to eesy, easee or EEEZZEE, or Cresco v Kressco – phonetic equivalent software such as used by the U.S. Trademark Office will not catch all phonetic equivalents;
Plural versus singular forms (there is no one letter difference rule);
Missing letter or letters, e.g., Immunogen v. Imugen (probably the most difficult to determine what third party trademarks exist that may be considered confusingly similar).
A good trademark search is also interactive. Depending on what initial results are obtained, there may be a realization that the search needs to be modified. This ideally occurs while the searcher is conducting the search. Often, phonetic equivalents and missing letter alternatives come to light as the search is being conducted. Experience in both trademark searching and analysis of the search results during searching is very important.
Trademark searching can be exciting, especially when the client calls and says, “We have chosen a new brand, and packaging is about to be printed. Can we use it?” Welcome to our world.