Part 2: Trademark Search and Clearance
United States trademark law is unique and different compared to trademark law in foreign countries and what may seem like common sense. Whether an individual is new to the area of trademark law as a whole, or a foreigner is thinking about filing a U.S. Federal Trademark Application, these common mistakes can be fatal and/or costly to any trademark application.
In Part 2, we are only looking at possibly the most important part in the process of obtaining a federal trademark registration, the trademark search and clearance.
(3) Insufficient Trademark Search and Clearance
One highly important step when selecting a trademark is to conduct a comprehensive trademark search and clearance of the proposed trademark at the federal, state, and common law levels. The goal of a search and clearance is to ascertain any potential conflicts which would result in a likelihood of confusion with pending or registered trademarks, or some other obstacle which would prevent the unfettered use of the proposed mark in the U.S.
Multiple clients tell us that they have done a search and have not noticed any conflicts with their mark, however we later undercover multiple registered marks or pending applications which would likely prevent the registration of the client’s mark. When individuals search on their own, they are typically performing a “knockout search.” This quick search will only show marks that are practically identical to the proposed trademark on the federal database, which completely ignores state and common law trademarks, as well as marks that may contain an alternative spelling but are phonetically similar. Thus, Relying on a knockout search is a quick way to waste money on unnecessary filing fees or potential legal fees.
A proper trademark search and clearance will take into account all factors of the likelihood of confusion test. The main factors are the similarities between the marks (as to sight, sound, and meaning) as well as the similarity between the goods or services offered under the two marks (as to the market channels or channels of trade, if goods are different are they likely to be used together or offered by one company, etc.). Some examples where many individuals may think there are no potential problems include:
- SMOKE-N-SAVE (cigarette filter tubes) compared to SMOKE’N SAVE (smoker’s articles), here the slight differences with punctuations will not sufficiently differentiate the marks, and the examining attorney held there was a likelihood of confusion.
- FREE-FLY (handheld exercise devices) compared to FREE FLY (clothing), while the marks are considered to be identical, the goods were sufficiently different and no likelihood of confusion was found.
- BENGAL (gin) compared to BENGAL LANCER (nonalcoholic club soda, quinine water, and ginger ale), even though the marks were slightly different and the goods were slightly different, there was ultimately a likelihood of confusion found between these marks.
Further, limiting a trademark search to active registrations on the USPTO database is also problematic. Doing so will result in missing any relevant state registrations and potential common law trademarks. As mentioned in Part 1, U.S. trademark rights are not granted based on registration, they are granted based on use. Therefore, all levels of trademarks need to be searched and cleared in order to be fully informed on potential issues, if any, when attempting to register your federal trademark.
Having a trademark attorney conduct a search and clearance, and analyze the results, will help an entrepreneur or business save time and money in avoiding unnecessary filing fees or wasteful filings. A trademark attorney will avoid the risks of overlooking any prior/pending trademarks and misjudging the analysis of the likelihood of confusion test, and is an overall easy way to avoid this common obstacle in the federal trademark registration process.