Like most tasks facing new business or the creation of a new product, where to search for a conflicting mark can be a daunting task. Some people will say you need to pay a professional search company to look for any conflicting marks. Whereas, others will say a Google search is sufficient. Like most things in the law, the answer, unfortunately, is it depends on the business or product.
Absent a federal trademark registration, trademark rights are geographically limited in scope. This means that trademark rights extend only to those areas where the mark is being used and where the trademark owners reputation may have taken them. If a business decides to focus on a particular geographic area, a professional search for unregistered or common law rights may be unnecessary.
The benefit of a federal registration is that it takes those geographically restricted rights and expands them to the nation even if the trademark owner is not offering their goods or services in every part of the country. This means that a party who federally registers its mark can force a subsequent user to rebrand once the senior party enters the junior party’s market.
This means that every business must search the United States Patent and Trademark Office for any conflicting marks, but may save some money by not conducting a professional trademark search. Even if a business forego’s a professional search, an Internet search should still be conducted to uncover any unregistered rights in the geographic area where the business intends to do business.
A proper trademark search requires the consideration of three factors: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) dilution. Generally, DIY Searchers mistakenly believe they are conducting thorough searches by breaking up a proposed mark to search its components, giving consideration to phonetically similar or foreign equivalent terms, and considering closely related International Classes.
Logically breaking up a mark to search its components is better than searching only for the identical mark, which is often called a direct hit search and in most cases worthless. But the similarity of the marks is only 1 of 13 factors considered by the United States Patent and Trademark Office to determine if a likelihood of confusion exists between two marks.
DIY Searchers also put too much emphasis on International Class numbers. The International Class Numbering System is merely a way for trademark offices around the globe to categorize the hundreds of thousands of applications they receive each year. And while the system attempts to group related goods and services in a particular class number the relationship can be highly tangential. The result is numerous goods or services categorized in the same International Class number that have no legal relationship to one another. In fact, the International Class number has no bearing on the examination of an application by the United States Patent and Trademark Office.
After finding the relevant International Class Number or Numbers, the DIY Searcher then needs to rely on his or her experience and gut to determine if the identified goods or services are related to what the person or client wants to offer under a particular mark. The DIY Searcher is not considering prior case decisions where findings of relatedness have been made.
Nor is the DIY Searcher properly evaluating dilution if there is no accurate consideration of relatedness. Dilution occurs when similar marks or components of a mark for related goods or services owned by different owners peacefully co-exist on the Principal Register. If you are not properly considering the relatedness factor, then your dilution assessment can be flawed as well.
BOB focusses on the key considerations for a proper trademark search: (1) similarity of the marks; (2) relatedness of the goods or services; and (3) dilution.
Trademark searching can be an under appreciated exercise. In our experience, most people mistakenly assume that trademark law is easy when in reality trademark law is filled with nuance that only experienced trademark professionals appreciate. Add in the cost of getting a trademark attorney involved to do a trademark search, and you now have the recipe for do-it-yourself trademark searching.
Some DIY projects turn out just fine, but when they go bad, they really go bad. And in the case of a trademark decision gone bad that means $$$$ wasted. Money and time that didn’t have to be wasted and instead put to a more safe, productive use. Most people underestimate the disruption any dispute can have on a business.
This DIY situation lead to the creation of BOB. BOB was created to provide reliable trademark searches at a reasonable price. And this blog was created to discuss trademark searching strategies and the myths perpetrated by some about failing to conduct a search. The only certainty is that a search of the United States Patent and Trademark Office is a must. The other search options are dependent on the type of business.