As trademark searchers, one thing we need to be on the look out for is a saturated market. In a trademark context, a saturated market exists when multiple trademarks share the same element for related goods or services. We know this is important because it tells us that either the entire mark or a portion of it is conceptually weak and that consumers are likely to rely on something else to distinguish between goods or services.
Unfortunately, the Trademark Trial and Appeal Board and the District Courts have not given much guidance on what changes are sufficient to avoid a likelihood of confusion with one of the marks in the saturated market. Nevertheless, that does not stop trademark owners from asking the question and expecting a firm answer about what changes they can make to avoid a dispute with another member of the saturated market.
As a trademark searcher, you should never tell a trademark owner that if they make a change that no harm will come to them because there is no such thing as a perfect trademark search. Additionally, litigation in general is unpredictable and you cannot forecast with any real certainty how another member of the field will react to the trademark. But if the trademark owner asks the question, you can’t refuse to answer. Here are some things to consider when formulating your answer:
- There are degrees to the saturated market, and not all saturated markets are the same. First assess whether the saturated market as a few or numerous members;
- Saturated markets with few members require more distinctive changes. Stay away from adding descriptive terms; and
- Saturated markets with numerous members generally require less distinctive changes. It may be possible to add a descriptive term to distinguish the mark from the others in the market. However, adding a distinctive term is always the safer bet.
As always, if the possibility of a rebrand within at least the first five years of using the trademark would result is big setback for the trademark owner’s business, then avoid the saturated market all together and choose a new name.