Trademark Selection Checklist
By Pliam Law Group, PA
|How Do I Obtain Trademark Rights?|
|To own a trademark in the United States all you need
to do is be the first to use it in trade and make
continuous use of the mark thereafter. The manner of use
required is (1) to use it in interstate
commerce, and (2) in a way that permits consumers to
distinguish your particular goods and services from those
of another producer. Trademarks based solely upon first
use are referred to as common law trademarks, and receive
protection under the common law (i.e. court-made law).
Trademarks that are registered with the state or federal
government receive additional protection under state and
federal statutes which provide benefits beyond the
protection available under the common law. Thus, the
purpose of registration is not to acquire trademarks, but
rather to enhance the already existing rights associated
with a common law trademark.
For more information, see:
|How Do I Choose a Good Trademark?|
|Choosing the right name or logo for a business or
product is an art. Companies sometimes pay thousands of
dollars to marketing and identity research firms to help
them find the "perfect" name for a product or
business. This is oftentimes money well spent, since the
value of a name can repay those costs many times over,
once consumers internalize the name and return to it for
repeat business. A name can even become a status symbol
of sorts, e.g. Nike, Ty, or Guess, allowing companies to
charge well over the normal markup for the product.
Whether you spend thousands on naming experts, or can
only afford to pull a name out of a hat, the naming
process is woefully incomplete without a legal analysis
of a name's trademark potential.
Unfortunately there is no quick formula for choosing a good mark. However, As a general principle, you will want one that is (1) distinctive, and (2) not forbidden, and (3) not preempted by an existing trademark. Begin by selecting selecting several possible marks that are not forbidden, and are strong enough legally for your purposes. If you start with too few marks to begin with, you may find after searching for possible preemptive marks that all your choices have been taken.
Print out a checklist for selecting a good trademark
at: Trademark Selection Checklist.
Mark is Distinctive
Some trademarks that are not fanciful, arbitrary or suggestive may become distinctive through extensive use and/or advertising. Where such use or advertising results in a trademark permeating the marketplace, and gaining a requisite level of market recognition among consumers, then the trademark is said to have acquired secondary meaning. As such, it is capable of receiving protection from the courts, and can be registered with the USPTO in the same manner as inherently distinctive marks. Marks that are capable of "acquiring distinctiveness" include:
Finally, generic marks (those consisting of the name or picture of the product itself) are never distinctive and cannot be protected, no matter how widely recognized they are by consumers. Examples of generic terms are DISCOUNT MUFFLERS for car muffler repair and replacement services, DOS for a computer operating system, and SHREDDED WHEAT for breakfast cereal.
Marketing Strength Versus Legal Strength
For more information on this topic, visit the MarkLaw
page entitled, Legal Strength of
is not Forbidden
or scandalous marks;
The Mark is
not Preempted by a Prior trademark
Ideally, there are two stages to searching for a prior rights in a mark that may preempt your own. The first stage is called a knock-off search, and consists of looking for exact matches of the proposed mark in such places as the U.S. Patent and Trademark Office database (http://www.USPTO.GOV/tmdb/index.html), and the Internet. This preliminary search can be conducted by you, or you can hire a professional search firm or attorney to conduct the search. (See Pliam Law Group, PA fees for this service). If you conduct this search yourself, you may want to also look at the Yellow Pages in your region and/or trade journals in your industry. Professional search firms vary widely in what they search for at this preliminary stage. All will probably look at a more current version of the USPTO database cited above. Some may look at the Internet, and some may even look at various databases of non-registered marks (or common law marks). Pliam Law Group, PA searches a subscription-only database that provides current USPTO data and Internet hits for the mark, and then searches a moderate-sized database of common law trademarks.
If the marks you have selected survive the knock-off search phase, then you can begin stage two: a full search of existing and pending trademark registrations, and of common law marks (ones that are not registered, but have preemptive rights because of prior use). A KNOCK-OFF SEARCH ALONE IS INADEQUATE to determine whether a mark is available for use. That is because the preliminary knock-off search only tells you whether someone is already using the exact version of your mark. Yet, as described above, it is not only the exact marks that can preempt your proposed mark, but also those that are confusingly similar. In short, marks that sound alike, look alike or have similar meanings are confusingly similar.
It is strongly advised that you hire a professional search firm to conduct a full search of your mark at this stage. Many such firms have software programs that systematically generate all conceivable search terms. For instance, if one of the words in your proposed mark is "SMART," then the program will generate searches that start with "s" and end in "t," or start with "s" and have "art" somewhere in the middle or end. The software program will also likely generate searches that include synonyms such as "INTELLIGENT" or "WISE" in place of smart. Thus, if the full mark is "SMART GRIP," the program will also generate searches for "WISE GRIP" and "INTELLIGENT GRIP." These are but minor examples of the painstaking combinations of search terms that a program can instantly generate and search. For a human to duplicate these combinations and perform the requisite searches is not only enormously time consuming, but risks human error.
The final step in determining whether or not a mark is available for use, is to interpret the search results. This sounds easier than it actually is. There is a complex body of law that defines what is confusingly similar. For this reason, you are well advised to hire an attorney to interpret search results. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies owning marks analyzed within the opinion from suing for infringement by showing them that an attorney has already decided that the marks are not confusingly similar. Since legal opinions focus mostly on those marks that are likely to lead to claims of infringement or dilution, this second benefit of opinions is no small advantage. Of course, a legal opinion can never guarantee that you won't be sued, nor even that you will prevail in a lawsuit if you are sued, since there is so much subjectivity in trademark law. However, an opinion goes a long way toward helping you control the risk of future litigation.
|Must I Search for Prior Rights in My Trademark?|
|The mere fact that you are reading this suggests you
are well ahead of the game. All too often, business
owners are misinformed and think that since the Secretary
of State registered their corporate
name, then the name is cleared for use as a
trademark. How extensively you search, and indeed whether
or not a search is necessary, depends entirely on the
facts of each individual case (as discussed below). Most
businesses should find that a full search is wise, if not
prior to adopting the mark, then as soon as the business
or product shows some promise of success. However, since
clearing a mark for use costs upwards of $700, small
startup businesses often ignore trademark issues
altogether. That is a grave and potentially costly
mistake. Trademark law is one area where doing even a
little is a lot better than doing nothing at all. What's
more, there are ways of keeping the costs on the lower
end of the spectrum if you know what marks to select in
the first place, as discussed below.
What is at stake if you don't perform a search is that your mark may infringe an existing mark. If this happens, you will most likely be forced to stop using your mark, and will probably have to destroy all packaging, advertising and other materials bearing the infringing mark. You may even have to pay monetary damages, court costs attorneys fees, and prejudgment interest. However, often the most damaging result of having to stop using a mark is the loss of customer recognition of your product or service, and the accompanying loss of business. Common sense dictates that if yours is a small service business in which customers find you by your location as well as your name, then you stand to lose much less than a nationwide manufacturer whose products are purchased primarily because of name recognition. Nevertheless, because of the potential expense of litigation, even small service businesses risk a significant monetary loss.
Many businesses think they will simply stop using the allegedly infringing mark if it ever becomes a problem. This is very short-sighted since you may be sued before you have the chance to stop using the mark. There are three good reasons a business may sue instead of issuing an ultimatum to stop your use of a mark. First, they may want to foreclose your opportunity to have a court judge the matter in a location convenient to you in the event you sue for a declaratory judgment to determine whether or not you are in fact infringing. The second reason is that the owner of a mark may believe you should pay them monetary damages, and may not want to let you off the hook by simply halting use of the mark. The final reason for suing before issuing an ultimatum is to intimidate, which gives the company a superior settlement posture. It is true that not all business owners care to get involved in litigation. However, you will never know for certain which businesses are likely to be aggressive and which will be more reasonable, until it is too late.
When a search is not necessary
Another situation in which you may reasonably contemplate not searching for prior rights in a mark is if your mark is generic, since nobody with a generic mark can stop your use of the mark. However, there are a couple problems with this approach; namely, you may be wrong about whether or not a mark is generic, and even if you are right that the mark is generic, the owner of the mark may not be readily convinced without a long and costly lawsuit.
Avoiding marks that are more expensive to
clear for use
It is important to note, however, that Barbara's mark is not immune to finding a conflict just because there were no exact matches in the knock-off search. Her mark, LEXIGO, may be confusingly similar in pronunciation or look to an existing mark, even if not identical. In that regard, Barbara is actually at a disadvantage with her unique mark. Unique marks receive very broad protection, and even very remote variations from LEXIGO may be confusingly similar, such as "PEXEGO" or "LECKSEGO."
The one advantage Pete has in his chosen name is that since there are many varients of "paper" and "perfect" in this industry, he might be able to join the crowd since these marks are all very weak, and don not provide much protection. By contrast, Barbara will have to worry about even remote variations of "LEXIGO."
In sum, searching for existing trademarks prior to adopting your mark is almost always the only way to go. However, if you have a small, start-up business that simply cannot afford to clear a mark for use, by all means, do as much as you can do to search for prior rights in your proposed mark. Take advantage of the information on this web site to help you determine for yourself whether a prior mark is a problem. While clearing a mark on your own is more risky than paying a professional search firm and an attorney, and should only be done when there is absolutely no money available, by doing at least this much, you will be much better off than ignoring the issue altogether. Finally, if you do conduct your own search, make sure to print out your search results and document your search strategy as well as the dates you conducted the search in the event you are challenged down the road for failing to conduct a reasonable trademark search. You may even consider notarizing the search documents to further verify that you conducted your search prior to using the mark.
|Benefits of Registerting a Trademark|
|Among the greatest advantages of
owning a federal trademark registration is that you will
enjoy greatly expanded rights geographically, and you
will deter others from using your mark, thus avoiding
expensive litigation. A registration also gives you
certain advantages in court, including the ability to
seek triple the amount of your actual damages. For United
States businesses planning to expand internationally in
the future, an early registration is crucial for
preserving your trademark rights in treaty nations.
© 1998 Pliam Law Group, PA. All Rights
Reserved. MarkLaw and