It is surprising how many trademark applicants file their applications without having performed a search to see whether their proposed trademark is even registrable. If you fall into this category, here is some guidance. Once you have created a list of potential trademarks, you have to ensure that no one else has registered the mark or is using unregistered versions of the same or similar mark.
Why do we look for unregistered versions? That’s because a government trademark registration is not required to obtain trademark rights. If a business is using an unregistered trademark, they are said to have “common law” trademark rights. Registration gives you other substantial benefits but not the right to use a trademark when another business may have used it or a similar mark first for the same or related goods and services. Keep in mind that similar marks are not only marks that look or are spelled the same but also sound the same. CAT and KAT, therefore, are confusingly similar even though they are spelled differently. Complicating the analysis is that similarity is measured from a reasonable consumer’s perspective not from the perspective of the trademark applicant. Also, what qualifies as a “related” good or service, an advanced subject, is not always obvious. There is a body of case law that seeks to clarify the question but requires a trained person to make a determination.
Do not waste your time and money registering or attempting to register a trademark without conducting a search. The search is a three-step process:
1. First, a USPTO “knockout” search should be performed. The purpose of this search is to determine whether there are any registered trademarks or pending trademark applications that are the same or similar to your proposed trademarks. The Trademark Examiner will do his or her own search of the USPTO database so you don’t want to pay filing fees without doing your own USPTO search first. You will lose your filing fees if the Examining Attorney refuses to register your trademark because your proposed trademark is the same or confusingly similar to one that is already in the USPTO database.
2. Second, an internet search should be performed to make sure that there are not others out there using the same or a similar trademark for the same goods and services that you are selling.
3. Finally, we recommend performing a commercial comprehensive trademark clearance search. Commercial searches are the best and most comprehensive option because they cover federal and state government, business, and digital sources. They are expensive and many small or new businesses consider them to be a luxury. This is risky because a commercial search will provide the highest level of assurance that there are no conflicting trademarks that are either registered, pending before the PTO, or in “common law” use.
A competent pre-application trademark clearance search and analysis performed by a lawyer is security against wasting your money. Filing a trademark application without vetting your trademark first is risky business. Your application could be rejected by the PTO, you could receive a cease and desist letter from a senior user you were unaware of, or, worse, you could be sued for infringement.
Follow these guidelines and you will have greater confidence that your trademark application will not be a waste of your time and money. The trademark attorneys at Lipton, Weinberger & Husick will be pleased to assist you.
Adam G. Garson, Esq.