It cannot be said enough that a business needs to conduct a trademark search before investing time and money into a new brand. Although no search can reveal every possible conflict that may exist with a mark, a proper search can steer you clear of the big problems. If you are going to do any searching, here are the reasons why searching the USPTO TESS database is a must because that is where the big problems likely will lie:
- Standard character form drawings. A trademark applicant does not have to claim a particular stylization to its mark, and can protect a word in any form of stylization. This means that even though you plan to use a stylization that is different from another trademark owner’s stylization does not mean you are in the clear.
- Nationwide priority. Absent a federal registration, trademark rights are geographic in scope. A federal registration expands those rights to the entire nation even if the mark is not used in every corner. And the trademark registrant has the benefit of its priority date in every part of the country too.
- Presumption of validity. Any trademark that has been registered on the principal register enjoys the benefit of being presumed valid. If you think the mark you want to use is descriptive, so that everyone should be able to use it, you may have to think again if someone has registered the once descriptive term claiming acquired distinctiveness.
- The exclusive right to use. A federal trademark registration is evidence of the trademark owner’s exclusive right to use the mark. If you think you can use your last name as the name of your business, you may have to think again if another SMITH has beat you to it.
- The intent to use application. We discussed in a prior post that the Intent-to-Use trademark application was a game changer. If there is no use of a conflicting mark in the marketplace, then the only place to uncover an issue is at the USPTO.