As we discussed in a previous posts, the similarity of the marks is evaluated in terms of sight, sound, and meaning to arrive at a determination of whether the two marks at issue create similar, overall commercial impressions. From an evidentiary perspective, parties will count letters, syllables, and even engage linguists to opine on the phonetic similarity of two marks. It is also common to rely on how the mark is actually being used in the marketplace.
However, in a recent TTAB decision, the Board cited with approval a 1993 United States Court of Appeals for the Federal Circuit decision that stated:
“[w]hen determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion. Indeed, it is well-established that the Board must only compare the mark in the prior registration with the mark in the application. Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.”
In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993).
What this highlights is that the USPTO plays by different rules when it comes to the registration of a trademark than how things may play out in the real world marketplace. It also highlights the importance of further investigating close calls that are revealed in a search. What looks like a problem before the Trademark Office may not become an issue in the real world marketplace. It is a place where companies can and should exercise their business judgment.
The Trademark Office Database is littered with abandoned applications and registrations. In the Trademark Office Database these abandoned applications are registrations are marked at “dead.” An application can be abandoned for any number of reasons, but the most common reasons are: (1) failure to file a response to an office action; (2) failure to timely a statement of use; and (3) express abandonment as part of a settlement. In the case of failing to respond to an Office Action or filing a Statement of Use, the applicant has two months from the notice of abandonment date to file a petition to revive. After that, there is slim to no chance of reviving an abandoned application.
The same is true on the registration side. Most registrations are surrendered for cancellation for failing to file the required Section 8 Declaration of Continuous Use or as part of a settlement. If a registrant fails to timely file the Section 8 Declaration of Continuous Use, there is a six month grace period during which the Section 8 can be filed. After that, there is slim to no chance of reviving an abandoned application.
Neither the Trademark Office during the examination of an application or the Trademark Trial and Appeal Board will give any considerations to “dead” records. In other words, no confusingly similar “dead” record will prevent the registration of your mark. So why are these “dead” records in the Trademark Office Database? It is because the Trademark Office has a rule that everything submitted to it will be made public, and nothing will be purged from that public record absent an extraordinary situation.
If the Trademark Office and TTAB give no consideration to “dead” records, then why should you consider them in a trademark search. The arguments in favor of reviewing these records: (1) it was just a mistake to miss a filing and the owner will revive; and (2) cancellation a registration or abandoning an application do not affect any common law rights.
With respect to the second argument, it’s true that common law rights are undisturbed. But if the reason for the cancellation is failure to file the Section 8, that means there is likely no use of the mark. Moreover, the cancellation means that the nationwide scope of rights revert back to being geographically limited. Therefore, depending on the business, the common law rights may not be an issue.
Most responsible trademark owners stay on top of the maintenance and filing deadlines or they have a law firm helping with this task. If a mistake is made, it is rare and corrected quickly. The more likely scenario is that the trademark owner has lost interest and is not that serious about its rights. This means a low likelihood of that prior trademark applicant or registrant coming out of the woodwork to oppose an application or petition to cancel a registration.
There is very little value in reviewing “dead” records in the Trademark Office Database, which why BOB filters this noise out of the search process and focuses only on what matters.
Coach has been the most active trademark owner in terms of number of lawsuits filed for the past nine years according to Lex Machina’s third Trademark Litigation Report. From 2009 to October 2017, Coach has filed 758 lawsuits. The top ten filers for the same period are: Chanel, Sream, Microsoft, American Automobile Association, Deckers Outdoor Corp, Boost Worldwide, Step-Tone Entertainment Corp, Oakley, and Dd Ip Holder.
What this data shows is that some industries are more active when it comes to trademark enforcement than others. This is another consideration when deciding whether to spend the money on a comprehensive search. Depending on the stage of a company is in and the industry, spending the money on a comprehensive search may not be necessary.
“Artificial Intelligence” is defined as “the theory and development of computer systems able to perform tasks that normally require human intelligence, such as visual perception, speech recognition, decision-making, and translation between languages.” Moreover, artificial intelligence programs needs to query against an existing database in order to “learn.” When you consider that the key likelihood of confusion factors in a trademark search are: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) dilution, it begs the question: what exactly is the computer learning?
There is no learning required to assess whether a two marks share similar components. There is no learning required to know whether the TTAB or Court has found certain goods or services to be related. There is no learning required to assess whether a crowded field for a particular mark exists or not. Nevertheless, some trademark search software companies tout that their applications use artificial intelligence.
The term “artificial intelligence” seems to be used similar to the term “natural” in its hey day. Until the FDA started investigating the use of the term “natural,” numerous consumer products were marketed as “natural” when in reality they were far from being “natural.”
There is a place for artificial intelligence in trademark searching, but we don’t believe it has been built – yet.
BOB wishes you and your family a very Happy Thanksgiving!
The business judgment rule is a corporate law doctrine where deference is given to the business judgment of corporate executives. The principal behind the business judgment rule is that directors of a corporation have a bona fide regard for the interests of the corporation, and make decisions that are in the best interest of the corporation. Too often, company executives forget this and accept trademark search results delivered from a professional trademark searcher as the final say on the availability of a proposed mark.
The reality is that a trademark search is only an attempt to assess risk, and the trademark search results are providing signals about where the source of the risk may come from. It is the business owner’s responsibility to question the signals and to decide how much risk the business is willing to take. After all, the business owner knows his or her industry the best.
As a business owner, your goal is a thorough search with the search results you need to make an informed decision. Certainly, the opinion of a professional searcher is helpful, but don’t blindly accept it as the law. If you receive an opinion that a mark may not be available, consider the search results yourself and determine if you agree with the opinion. Sometimes your business judgment may lead you to a different conclusion.
Coming up with a name is not easy. There are many obstacles that can stand in the way such as: the word does not convey the right meaning, the corresponding domain name is not available, or the word legally is not available as a trademark. But like the available trademark search software applications, it is important to vet a name generation application before using it. Some will ask for information to attempt to match certain words to your business. This is likely difficult to do because, unlike trademark searching, naming does not follow a set of rules. What is the most valuable aspect of name generator is if the application returns names with corresponding domain names that are available. But finding a name with a available domain name will be worthless if the domain name is confusingly similar to a registered domain name. If it is, then you may be on the receiving end of a demand letter and possibly a defendant in a UDRP proceeding, which is arbitration for domain name disputes.
If you are cash strapped or just in need of some inspiration for a name, start with a name generator, but finish with a trademark search on BOB.
In a prior post, we talked about the absence of a trademark search from the branding budget, and we may have found the reason why. If you conduct an Internet search for “rebranding checklist,” you will find several sites with great tips on what to consider when going through a rebrand. However, we only found one that included a trademark search as one of the things to consider.
It goes without saying that a trademark search has to be part of any rebranding effort. The question really is when should the trademark search be performed. Brands are much more than a word, but central to any brand is words. A lot of effort goes into designing a strategy that transforms ordinary words into powerful brands. Ideally, it would be preferable to know if a word may not be legally available before the effort is spent in designing a strategy around it.
Have a trademark search done early in the process. And that is where BOB can be a great team member. No waiting for a professional trademark searcher to return with the search results. Use BOB when the creative itch strikes to get the feedback you need to move on to developing a brilliant strategy.
When you conduct a trademark search you want to use a broad description that captures the goods or services you are or intend to offer with the mark. It is wise to do this for a couple reasons. First, you want to capture as many potentially relevant marks as possible so you can determine which marks are truly concerning and which marks are not. Second, and not talked about often, is because most attorneys that file trademark applications use a description that the United States Trademark Office has already approved.
To avoid unnecessary refusals, the Trademark Office published a searchable identification of goods and services manual. If you choose a description from this manual, the Trademark Office will not issue a refusal based on an indefinite goods or services description. So let’s explore the manual a little.
Some descriptions that have been accepted by the Trademark Office are: “restaurant services,” “beer,” “mobile phones,” and “vacuum cleaners.” Because the goal of a trademark attorney is to get as broad protection as possible for their client, they are using the broad descriptions the Trademark Office has approved. The only reason to go narrow at the beginning is to avoid a potential cancellation proceeding to narrow later by another party. But if a dispute would arise, you can always voluntarily narrow in the interest of settling a case.
Most trademark attorneys are using broad descriptions when they can, so you should be searching using broad descriptions as well. Narrow descriptions at the search stage may result in missed marks that end up being concerning.
When you are talking about trademark protection there are certain terms of art that are important to understand. One term used often is a “comprehensive search.” A comprehensive trademark search is a search that includes reviewing multiple databases to uncover similar registered trademarks and unregistered (i.e., common law) trademarks. A comprehensive search often includes a review of the Secretary of State databases, Dunn & Bradstreet and similar company profile databases, news outlets, domain names, the Internet generally, and the United States Patent and Trademark Office. The reason a comprehensive search reviews these sources is because trademarks in the United States are created through use not registration.
The cost of a comprehensive search report can vary. We have seen comprehensive search reports for as low as $150 all the way up to $850 (with a normal turnaround of 3-5 business days). And that is just for the search report. You can add another $500-$1,000 in attorney time to review a search report and another $1,000 or more in attorney time for a formal clearance opinion letter.
And it is important to remember what a clearance opinion letter is. It is not a non-infringement opinion. The attorney drafting the letter is not reviewing the proposed mark under a particular judicial circuit’s likelihood of confusion test. The attorney is analyzing both registered and common law marks for: (1) mark similarity; (2) relatedness of the goods/services; and (3) dilution. A non-infringement opinion letter that considers all likelihood of confusion factors can run up to $5,000 or more.
It is important to always keep in mind what J. Thomas McCarthy – a nationally renowned authority on trademarks – said in his well-known legal treatise McCarthy on Trademarks and Unfair Competition: “it is almost impossible to find out with total certainty whether anyone has previously used a non-registered trade name in the United States such that every possible conflict can be foreseen in advance. Thus, even an expensive and extensive trademark search can only provide a conditional guarantee that no conflicts exist. But [any] search is better than no search at all.”