Trademark Research
A trademark is typically a word, phrase, symbol or design, or a combination
thereof, that identifies and distinguishes the source of the goods of one party
from those of others. A Service Mark is similar to a trademark but is distinguished
in that it identifies and distinguishes the source of a service rather than
a product or class of goods. Trademarks also include sounds (NBC chimes) and
color (pink fiberglass – Owen Corning, yellow arches – McDonalds).
Whatever mark you choose, trademark research is an important step towards minimizing
risk and optimizing the value of the trademark.
Generally, the terms "trademark" and "mark" are used interchangeably,
and refer to both trademarks and service marks.
It is legally important and commercially practical to pick a mark that:
- is capable of acquiring
distinctiveness;
- satisfies current
trademark laws;
- is not confusingly
similar to another mark already in use, registered or applied for on
the US Federal Register and that is
associated with
a similar
product or service;
- is not in use or
filed by another in any potential foreign markets; and
- the domain name
is available or obtainable.
Trademark research for clearing desired marks should check existing, pending,
issued, and abandoned federal applications/registrations, state registrations,
common-law non-registered uses such as trade directories, trade name directories,
specialized directories, buyer's guides, phonebooks, telephone directories,
search engines, domain directories, and international sites. Simply stated,
the greater the scope of the trademark research, the greater the level of confidence
in the mark. Since it is possible for a foreign trademark application filed
under treaties such as the Paris Convention and Madrid Protocol to claim priority
to an earlier filed application, the research of international trademark resources
is advisable.
Continuing trademark monitoring for the later emergence of marks confusingly
similar to existing marks is equally important in order to maintain the value
and enforceability of the client’s trademark portfolio.
It is always helpful for a client to prescreen desired or candidate marks
before approaching the trademark attorney. This can save time and money. More
detailed information on how to conduct trademark research is available on our
trademark screening page.
Analyzing the Results of the Trademark Research
Once the trademark research is completed, the results must be analyzed by
a competent trademark attorney. The ‘likelihood of confusion’ analysis
is the legal test for comparing related trademarks. In particular, the test
is employed to determine whether there is a likelihood that usage of the two
marks will cause public confusion as to the source, sponsorship, or other association
of the goods/services on which the marks appear. Clearly, candidate marks that
are similar to marks already registered or in widespread use for similar goods/services
are likely to be rejected for registration by the Trademark Office, be unenforceable
against the senior mark, and increase the risk of legal actions. Having to
change a trademark is not only expensive and time-consuming, but loses whatever
goodwill may have accrued.
It is difficult to identify, let alone avoid every relevant mark in use, and
even a robust trademark research process can miss a similar mark in use by
a small company in a remote place like Dixville Notch, New Hampshire. In the
long run, however, trademark research is worth the effort and expense. A strong
trademark can be a valuable asset to your business - engage a competent trademark
professional early.
The trademark attorney team at Vern Maine & Associates is lead by
Additional
Trademark Information:
Trademark Screening Search: this document
offers practical assistance for doing your own initial clearing searches
for assessing the merits a proposed or selected trademark.
Trademark Intake Form facilitates the
collection and reporting of the information required by a trademark attorney.
General Trademark Information explains
in detail the aspects of good and bad trademarks, and the benefits and
procedures of applying for U.S. federal trademark registration.
Domain Names are
the street signs of the Internet, and are often highly prized as trademarks.
Read more about them here.
|
