More often than not, a trademark search is going to reveal some prior registered marks or marks subject to a pending application that could potentially prevent the registration of your proposed mark. In fact, when you are searching, you should be searching broad enough to capture arguably problematic marks because at this stage in the branding process you want to be over inclusive.
Whether a problem exists with your proposed mark is easy when the search reveals an identical or similar mark that is registered for identical or related goods or services. It is more difficult to assess a potential problem when you are dealing with marks on the periphery. In other words, those marks that may share an element of your proposed mark that is being used in connection with goods or services that are in the same general category as your goods or services, but are not identical or arguably related. Here are five questions to ask yourself when assessing these periphery marks:
- How many of the periphery marks share the exact same element? The more marks sharing the same element suggests that your proposed mark is also capable of co-existing if the other element of your mark is different from the other marks in the search results.
- Although in the same general category, is the nature or function of your goods or services different from the nature or function of the goods or services of the marks in the search results? There are inherent limitations in how goods or services are sold given the nature of good. For example, a lot of goods qualify as medical devices, but some are expensive and sold by direct sales to hospital administrators while the others are sold over the counter at CVS.
- Does your proposed mark have noticeable differences from the marks identified in the search results? A mark or element thereof may be diluted, but that does not mean it is incapable of preventing the registration of another mark. There are degrees to dilution or trademark strength in trademark law. Don’t be fooled into thinking that changing your mark by a single letter will be sufficient to avoid a dispute with the owner of a prior trademark.
- Is your risk tolerance high, medium, low or somewhere in between? If you are the trademark owner, you know what risk you are willing to take. If you are a branding company and presenting a list to a client, you may not know how risk tolerant your client is. Although, if this is not a question in your client intake form, then it should be. Nevertheless, search results on the periphery provide opportunities for reasonable argument about there not being a likelihood of confusion. The question for the client becomes whether they want to spend the money to litigate that question given the uncertainty involved in the legal process.
Trademark search results are signals that as searchers we need to pay attention too. Sometimes those signals are easy to interpret, but other times those signals require some more thought and investigation.