Vetting a New Trademark: How Upfront Trademark Diligence Can Minimize Future Headaches
December 23, 2020
Before adopting a new trademark or filing an application for federal trademark registration, it is wise to conduct clearance searching. There are various purposes behind clearance. These include 1) dispute avoidance; 2) ensuring the mark as strength; 3) evidence of diligence and good housekeeping.
Dispute Avoidance. First and foremost, searching helps assess whether the chosen mark is likely to trigger a dispute with someone who already adopted the same or a similar mark. Importantly, trademark conflicts are not limited to the use of an identical mark for an identical product or service. Instead, the legal analysis typically focuses upon whether the existence of two similar marks in the marketplace might lead consumers to assume that the products come from the same source or that the sources have a relationship or are otherwise associated with each other. Furthermore, contrary to popular belief, trademark rights are effective upon the first use of a mark on a commercial product or service. Marks need not be registered. Therefore, the best way to avoid a dispute is to search the landscape of other users in the marketplace to be sure someone else didn’t hatch your great branding idea before you did.
Strength Assessment. Searches can also be used to help determine the “strength” or distinctiveness of the chosen mark. For instance, if a mark or a constituent of the mark is already in broad use (as evidence through search results), that tends to suggest the proposed mark is relatively weak. The strength/weakness of a mark can be important if the brand is intended to shoulder a lot of goodwill well into the future. If your chosen brand is already somewhat diluted, that can make it difficult to stand out or enforce it against others. On the other hand, if the brand is intended for short-term use or merely to generally connote a function or feature of the goods, then the brand’s relative weakness may not be as important to the owner.
Diligence and General Corporate Housekeeping. Research into proposed names for upcoming product launches is simply a good corporate habit. It demonstrates diligence and attention to potential areas of exposure. While diligence is a good habit for all companies, it can be extremely valuable for start-ups and small and medium-sized businesses because detailing the steps taken to ensure marks are protected, and protectable is often important to investors.
Conducting Trademark Searches
To conduct a clearance search and provide you with useful analysis, your attorney will need you to provide some vital information about how you plan on using the mark. How will the mark or name be used? For example”
- Will the proposed new mark appear on all company materials, directly on the product, only on letterhead, or just on coffee mugs or swag?
- Is the mark proposed to be used for an extended period of time or just for a season or at a single trade show?
- If the mark is intended to identify a specific product(s) or service(s), what is the nature of those products and services, and who are the likely purchasers?
- Is the mark intended to be a “house mark” – for instance, one that will appear on virtually all commercial products and services?
- Or, will it merely be a moniker for a process or function buried deep within a product (or something similar)?
- How geographically expansive is the proposed exposure? Worldwide? Nationwide, or just local?
- Is use intended online and/or over social media?
- Is the intended market B2B, B2C, or some combination?
Knowing the answers or possible answers to these questions in advance of initiating clearance will help ensure a smooth process and an analysis that matches your needs.
How Deep of a Clearance Search Should You Do?
Depending on the answers to the above questions (and potentially others your attorney may have), a search may go through several levels of granularity. Typically, all searching begins with a preliminary or “knock-out” search. A knock-out search can be performed relatively inexpensively through in-house searching capabilities, either by the company itself or through an attorney specializing in trademark law using the internet and online search tools to determine whether and how others might be using proposed names. This knock-out search generally is used to narrow down the list of potential marks or trade names, but many trademark owners stop at this basic level of searching if they have some tolerance for the risk of encountering non-obvious issues down the road.
With that said, the best way to “clear” a trademark or trade name is to undertake a comprehensive search of its availability if the knock-out search results are promising. A comprehensive search will be broader, should be as geographically expansive as the likely future exposure of the brand, and will investigate a number of otherwise unavailable databases of product/service names, business names, web and social media usage of similar names. The search cost depends upon the type of search requested (e.g., how comprehensive) and the turnaround time requested.
In general, we advise clients to procure the most comprehensive search available for a trademark or trade name to give a complete picture possible before proceeding with commercial use and/or federal registration. However, there can be good reasons to curtail searching under various circumstances.
Limits of Clearance Searching
It is important to remember that no search is infallible. While a good indicator of trademark availability, even a comprehensive search does not extend to every available database of possible marks. Further, search vendors can only search public records up through a particular cut-off date, usually at least a few days or weeks before the date, the search was performed. Therefore, there is always the possibility that someone has applied for, or begun to, use your proposed mark too recently to appear in the search. Moreover, some marks may not be found at all using these traditional search methods. Thus, searching is merely a means to increase knowledge and reduce risk. It never can serve as insurance.
While you always have the option to skip any pre-filing clearance and simply roll out a new brand and/or file an application without engaging in the pre-filing and/or pre-use trademark clearance searching detailed above, searching is often a relatively inexpensive way to minimize the risk of encountering headaches down the road. One of the primary value-adds of conducting some pre-filing trademark clearance is that it can hopefully save you money on filing applications that are dead-on-arrival because of obvious conflicts or launching a new brand only to be forced to go through a potentially embarrassing and expensive re-brand. If you or your company are considering trademark searching, it would be wise to consult with a legal professional about a search strategy before proceeding.
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