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Vetting Potential Trademarks

You may be a start-up with a new idea ready to go to market, or an established company seeking to brand a new product. In either case, you may have settled on one or more potential marks for your product, and now the question is how to vet those mark(s) and determine whether you can obtain a trademark registration for the mark and use it going forward. The following are some considerations you should keep in mind when vetting potential trademarks.

  1. Just because there are no exact matches in the USPTO database, does not mean the mark is clear for registration.

Many people incorrectly assume that if the exact mark they plan to adopt is not listed in the USPTO’s database, then it will be possible to register their proposed mark. Unfortunately, the analysis is more complicated than that. During examination, the USPTO uses a multi-factor test to determine whether your applied-for mark will likely cause confusion with prior registered marks. By far, the most important factors in this test are the similarity of the applied-for and prior-registered marks, and the similarity of the goods/services to which the respective marks apply. If your mark and the prior registered mark are identical, then the goods/services need not be as similar, and vice-versa. The marks are compared not only in the way they are spelled and pronounced, but also in their meanings. An effective trademark search includes not only exact matches, but also alternative spellings and synonymous terms. Further, the USPTO has held the many types of goods are related for the purposes of the likelihood of confusion analysis. For example, clothing and jewelry, because they are often sold by a single entity, are usually found to be related. So, if your proposed mark is for clothing, it may be that a similar mark on jewelry will prevent it from being registered. A well-prepared trademark search branches out into related goods/services to see if similar marks exist in those related areas.

Trademarked coffee company logo

  1. Just because the mark passes the examination at the USPTO, does not guarantee it is available for use.

If the trademark examiner concludes that there is no likelihood of confusion between your proposed mark and any prior mark on the register, the USPTO then publishes the trademark application for opposition. Under this process, any party that feels they would be damaged by the registration of your mark is able to contest your ability to register through a process called opposition. An opposition may be based on a prior user’s “common law” rights. When someone begins using a trademark in commerce, they begin to accrue common law rights in the mark. If their use of the mark pre-dates your first use of the mark, even though the other party has not registered its mark with the USPTO, they still may be able to demonstrate that they are the rightful owner of the mark and prevent your registration. Further, if your mark registers, a common-law user with prior rights may try to cancel your registration based on their prior use. A pre-filing trademark search should attempt to identify prior common-law users who may pose a risk opposition.

Playstation logo

  1. Any mark that is similar to a famous mark is likely to draw opposition.

The owners of established, national brands zealously guard their trademark rights. They monitor marks that are published for opposition, and they do not hesitate to oppose marks that they feel are too close for comfort to their own. Some brand owners take a very expansive view of their rights and oppose marks that at first glance might not be very similar to their own. When reviewing the results of a trademark search you should note whether any of the results are associated with a well-known, national brand, as they might present an opposition risk.