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 …

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 …

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 …

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 …

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 …

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 …