Is Searching the Trademark Office Enough?

Searching the United States Patent and Trademark Office for a conflicting mark is a must for every business because of the nationwide priority given to federally registered marks. A business does not want to be in a position of having to rebrand years down the road because it did not search the USPTO before investing in a brand. Searching beyond this and to what extent really depends on the business and industry in the business is in.

If the business operates in a saturated market, like the restaurant or craft beer industries, then conducting a comprehensive search for common law (i.e., unregistered) trademarks may be important provided the business aspires to expand throughout the nation. If the business does not aspire to expand, then an Internet search for an identical mark may be sufficient.

However, if a business does not operate in a saturated market, a comprehensive search may not be necessary. More likely than not, the business will know who its competitors are and what marks are already out there. An Internet search may be sufficient in this scenario.

It is important even at the early, search stage to not lose sight of the business objectives with adopting and registering a trademark.


Describing Words Used As Trademarks

The fifth statutory exception prohibits the registration of describing words. A trademark uses describing words when the words relate to the nature or quality of the goods or services.  A mark may also use describing words if it describes a geographical connotation or is a geographical name or term that is not obscure. Finally, a mark uses describing words if it describes a person (i.e., the mark is primarily a surname).  Given names, however, do not suffer from this defect.  For example, JOE’S CRAB SHACK is not merely descriptive of restaurant services.

A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods or services.  This is a high standard but the line between marks that are suggestive and immediately registrable from those that are merely descriptive is often a fine one. The most popular test with courts for determining whether a term suggestive is the “imagination” test.  Under the imagination test, a term is suggestive if it requires thought or perception for the purchasing public to reach a conclusion as to the exact nature of the goods or services.  If the mental leap between the word and the attributes of the product or service is not almost instantaneous, this strongly indicates suggestiveness, not mere descriptiveness.

It is important to keep this unprotectable categories in mind when creating subject matter to function as a trademark or service mark.  Equally important during the creative process is an understanding of the spectrum of distinctiveness and the several degrees of distinctiveness a potential mark possesses.  The varying degrees of distinctiveness are measured on a spectrum or sliding scale called “the spectrum of distinctiveness.”  The spectrum of distinctiveness includes the five categories of marks:  (A) generic; (B) descriptive; (C) suggestive; (D) arbitrary; and (E) fanciful.

While a likelihood of confusion is the primary consideration of a trademark search, descriptiveness should also be considered because a descriptive mark may take as along as five years to acquire any trademark rights.

The Relatedness of Goods, not International Class Numbers, is What’s Important

The case law is clear and settled that classification “is wholly irrelevant” to a likelihood of confusion claim. See, e.g., Jean Patou, Inc. v. Theon, Inc., 29 U.S.P.Q.2d 1771, 1774 (Fed. Cir. 1993). Nevertheless, there is far too much emphasis placed on searching the right International Classes than on finding goods or services that may be related to the goods or services intended to be offered in connection with a proposed mark. The Nice Classification system is merely a way for Trademark Offices to organize the thousands of applications that are filed each year. So why is the system relied on as a way for evaluating potential conflicts between marks?

For one, old habits die hard. DIY Searchers have been using the International Class System in their evaluations for years and it presents itself as a shortcut to evaluating the relatedness of goods factor. After all, the system does not randomly categorize goods or services together. But that does not mean that all goods in a particular class number are legally related.

To evaluate the relatedness of goods factor requires legal research to determine what goods and services have been found to be legally related to one another. Although DIY Searchers have access to some legal databases for free – TTAB’s e-FOIA page and Justia, it is time consuming to conduct this research. Considering the similarity of the marks and the International Classes only is not a thorough trademark search and can result in a costly mistake. In commenting on the recent settlement with Gorilla Glue Co., Ross Johnson, founder of GG Strains, said the lawsuit and rebranding efforts costs the company $250,000.

BOB provides a thorough search by considering not only the similarity of the marks factor, but also relatedness of the goods or services and dilution.




Where to search for conflicting trademarks

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.

Breakdown of a Proper Trademark Search

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.


It all began with a search

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.