Believe it or not, there is a method to the madness when it comes to conducting a trademark search. The goal is to identify warning signals that may require more investigation to determine if one of the identified marks in a search is in fact a knockout.
This starts with looking for the identical mark for the identical goods or services. If a mark is found in this first pass, the search is probably done. If no mark is found, then the next step is to look for parts of the mark with an identical goods or services description. Breaking up a mark may be as simple as separating its elements or as advanced as using truncation symbols and other operators. If no marks are found using the second wave of search conditions, then the next step is to repeat the process using goods and services that have been found to be related to the goods and services intended for the proposed mark.
It is only after following this hierarchy that a searcher can claim to have conducted a thorough trademark search, and it is this hierarchy that BOB follows to conduct its searches.
There are free, and some paid, trademark search software applications that do not consider multiple aspects of the proposed mark. Instead, they focus only on the identical mark and search the USPTO database for only identical marks. Results from these types of searches are superficial and only scrape the surface of what a trademark search should be.
BOB goes deeper when searching proposed marks. It gives the user the option to break up the mark to include in the search the parts of a mark along with the entire proposed mark, which is the right thing to do.
Watch the following video to see how BOB gives users the option to break up a mark as part of a search – the Component Search.
On October 12th, Fuzic, Inc. announced it was rebranding to Vibenomics, Inc. Scott McCorkle, Executive Chairman of Fuzic, said that part of the motivation for the rebrand was to “avoid potential trademark issues.” Fuzic, Inc. had not federally registered the mark FUZIC, nor has Vibenomics, Inc. applied to federally register the mark VIBENOMICS. If you asked BOB, FUZIC did not appear to present any trademark concerns and VIBENOMICS appears to be available to be registered as well. A quick Internet search also does not appear to reveal any issues with FUZIC. It could be that Mr. McCorkle saw an issue with FUZIC that was unrelated to a dispute based on another party as the reason for the rebrand. But Vibenomics would be wise to invest the money in filing a federal trademark application for its new mark.
The Lanham Act very broadly defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies goods or services, distinguishes them from those of others, and indicates the source of the goods or services. If these three critical elements are present, the possible subject matter available for trademarks is virtually unlimited. Indeed, single colors (UPS brown delivery trucks), product shapes (ZOVIRAX® tablets) and configurations (Apple® iMac® computer), product containers (HEINZ® ketchup bottle) and packaging (TOOTSIE ROLL® wrapper), vehicles (Porsche® 911® automobile), clothing (Dallas Cowboys® cheerleading uniforms), building exteriors (White Castle® restaurant) and interiors (Taco Cabana® restaurant), sounds (NBC® chimes), fragrances (cherry-scented motor oil), and other attention-getting devices are all protectable as non-traditional trademarks.
If you are considering a traditional trademark, it is settled law that the literal portions of a mark are more memorable than any non-literal matter accompanying the literal terms. Accordingly, you want to focus a preliminary search on the literal portion of the mark. Design components should be a secondary consideration to either support the conclusion that a proposed mark is not available or, in the case of a diluted mark, support the finding that the design component may be sufficient to distinguish the marks.