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.

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Descriptiveness and Trademark Searches

The fifth statutory exception prohibits the registration of matter that is merely descriptive or deceptively misdescriptive of the goods or services for which the mark is used.  A mark may be descriptive because it relates to the nature or quality of the goods or services.  A mark may also be descriptive because it describes a geographical connotation or is a geographical name or term that is not obscure. Finally, a mark may be descriptive 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.

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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.