The game is called trademark search and the object is to find the mark that may cost you thousands of dollars to develop a new name, defend yourself in court, or start from square one a second time. Easy to see that the stakes of the game are pretty high. But the high stakes cannot consume all your time because there are a thousand other things you need to do with the business. That’s where understanding the trademark search hierarchy can be very helpful.
Believe it or not, there is a method to the madness when it comes to conducting a trademark search. When you construct 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.
The trademark search hierarchy 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 you move on to the second step.
The second step in the trademark search hierarchy is to look for the identical mark for related goods or services. The law is clear that when marks are identical, less relatedness between the goods or services is needed for their to be a likelihood of confusion. If there are no marks found in the second trademark search hierarchy, then you move to the third level.
The third step in the trademark search hierarchy 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. But what is imperative is that you identify the dominant portion of the mark.
And while we previously said that less relatedness between the goods or services is required when the marks are identical, the same principle applies to similar marks and identical goods or services. If the goods or services are identical, less similarity between the marks is necessary for a likelihood of confusion to exist.
If no marks are found in the third trademark search hierarchy, then you move to the fourth level. The fourth level is to look for parts of the mark in connection with related goods or services. At this point it is important to point out that the farther away from levels 1-3 in the trademark search hierarchy, the more opportunities there are to make reasonable arguments about there not being a likelihood of confusion.
The final level – the fifth level of the trademark search hierarchy – involves searching for the mark and the class numbers. This level is primarily a catchall, and most, if not all, of the marks found is level will not present an issue to the availability of your 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.