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 searching for the mark and any alternate spellings of the mark and considering closely related International Classes, which as we discussed in yesterday’s post is the wrong focus.
Searching for different spellings of a proposed mark is important, but the similarity of the marks analysis is deeper than looking for similar spellings. As trademark searchers, we need to assess the proposed mark to determine its dominant feature or features. We then need to include those dominant features in our search equation because the Trademark Office has said numerous times that more weight can be given to dominant features of a mark when determining similarity. Logically breaking up a mark to search its components is necessary because searching only for the identical mark, which is often called a direct hit search is – in most cases -worthless.
We then need to consider the relatedness of goods or services for two reasons. The first reason is because relatedness of the goods is an important likelihood of confusion factor. The second reason is so that we can properly assess dilution in the search results. You cannot properly evaluate 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. When dilution is present in the search results, then the similar, shared elements of the marks in the results have less weight. 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.