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FREQUENTLY ASKED QUESTIONS: TRADEMARK SELECTION, SEARCHING AND REGISTRATION

By Jeff Costellia, Evan Smith, and David Safran

Here are answers to some of the most commonly asked questions about selecting and protecting trademarks and service marks:

WHAT IS THE DIFFERENCE BETWEEN A TRADEMARK AND A SERVICE MARK?

"Trademarks" and "Service Marks" are both "brand names." A trademark is a "brand name" for tangible goods you sell, and a service mark is a "brand name" for a service you provide. A mark may be a trademark, service mark, or both, depending on whether you’re selling goods or services. Legal protections, registration, and search procedures are basically the same for service marks and trademarks.

HOW SHOULD I SELECT A TRADEMARK OR SERVICE MARK?

The right trademark or service mark

provides a good initial marketing impression;

distinguishes your goods and services from those of competitors; and

doesn’t infringe rights of another company.

When selecting a mark for a new product or service, most companies start by brainstorming to develop a list of potential marks that have a nice ring. In your selection process, avoid choices that are highly descriptive of your product or service, or that are known to be similar to marks of direct competitors. When you have a list of desirable marks, you’re ready to search.

WHY SHOULD I SEARCH?

Before you build a business around a mark, you need information about whether the proposed mark is likely to be protectable, and whether its use might conflict with rights held by an existing business. A search provides information on these two issues.

Protectability. If the proposed mark contains commonly used or descriptive terms, your competitors may be able to use similar marks, and get away with it. Furthermore, if you are able to register the mark at all, it will only be due to the weakness of marks using those terms.

Conflicting Rights. If a company with superior rights in a mark discovers your use of a similar mark, that company may sue for damages, or at least demand that you change your mark. If you are forced to change your mark in midstream, you forfeit your investment in printed materials, artwork, advertising, and any consumer recognition that has been developed. A timely search and the advice of a trademark expert are a worthwhile investment if they prevent major setbacks.

HOW AND WHERE ARE PROFESSIONAL SEARCHES CONDUCTED?

Searches can be conducted at various depths to provide different levels of risk reduction. How much you should search depends on a balance of several factors, including (1) the level of risk you are willing to accept, (2) the amount you will invest in developing the mark; and (3) budget limitations.

You’d be foolish to plan a nationwide product rollout with major TV and print advertising highlighting the new mark, without searching thoroughly for potential problems. On the other hand, if you’re developing a product that will be sold only through your website (no printing costs) and funding operations with credit card borrowing (no money), it may be a prudent business decision to accept the risks associated with a less extensive search.

An appropriate search will minimize the risk that a conflicting mark will arise and cause a problem after a substantial investment has been made, and consumer recognition established. Available searches include the following (in roughly ascending order of cost and detail):

Federal Registration and Application CD-ROMs - The U.S. Patent and Trademark Office publishes a CD-ROM database of pending and issued federal trademark registrations, updated quarterly. Most trademark specialists have these CD-ROMs in their office, and can search them quickly and easily without incurring database charges. These CD-ROMs don’t provide a complete search--they aren’t up to date, and the limited search engine often overlooks marks that are spelled differently, yet are close in sound. In our office, we use the CD-ROMs as a quick check before clients incur more substantial costs for a definitive search.

Manual Search at the Trademark Office - Federal registrations and pending registration applications are not available online, but entrepreneurs with limited budgets can conduct free searches at the Trademark Office in Crystal City. For some marks, especially marks including a design element or logo, a manual search in the trademark records of the U.S. Patent and Trademark Office is a particularly useful strategy.

Commercial Trademark Database - These databases cover both state- and federally-registered marks, as well as pending applications for federal registration. The most prominent online commercial database is the Saegis (TM) system operated by Thomson & Thomson. The commercial databases are more up-to-date than the CD-ROMs and are better at compensating for spelling variations. Typically, a commercial database search is conducted through your attorney and may cost $300 to $500, including interpretation of results, a key service not provided by the commercial database service.

Common Law Searches - These searches identify unregistered uses of the proposed mark in various trade journal, catalog, periodical, product register, and telephone directory databases, as well as on the internet. Such extended searching is particularly important if a mark is going to function as a company name and/or a substantial amount of money is being spent to introduce and develop a new mark. The InterNic registry can be checked for availability of the mark as a domain name. An extended common law search using various commercial databases (and analysis of the results) may cost several hundred dollars.

International Searches - Worldwide screening and foreign national searches may be important if you plan multi-national marketing, especially since many foreign countries grant rights in a mark to the first person to register, rather than requiring actual use.

WILL CONDUCTING A TRADEMARK SEARCH ELIMINATE ALL RISKS?

In an ideal world, you might type your proposed mark into a computer and get a simple thumbs up or thumbs down. However, the real world is full of uncertainty. It is easy to miss major potential problems when conducting a trademark search, for the following reasons:

Unregistered Rights. Companies can establish trademark rights merely by using a mark, even without registering it. As a result, there is no all-inclusive database of existing trademark rights; in fact, some trademark rights may not be listed in any of the databases. Thus, even with extensive searching, you can never be 100% certain that a conflicting mark doesn’t exist.

Searching Errors. You can infringe a trademark by using a mark that sounds or looks similar, yet isn’t identical. Computers are good at finding identical matches, but it’s easy to miss non-identical marks in both manual and database searches.

Legal Complexity. It is difficult for a novice to analyze the search results, because there are no definitive rules for identifying problems. In some cases, another company’s ownership of an identical trademark will not cause trouble. In other cases, you may have trouble even with what you feel is a substantially different trademark.

IS THERE A WAY TO SEARCH WITHOUT SPENDING MONEY?

Unfortunately, we don’t know of any free online database providing trademark information, but entrepreneurs with limited budgets can take some useful first steps before incurring expenses.

Internet. Searching on the internet is both free and potentially useful. When searching the internet, look for variations of individual components of your mark, and search for spelling variations that would have a similar sound. Don’t forget to check the Internic site to see if your must-have domain name is taken.

Trademark Office. Those in the Washington D.C. area can visit the Trademark Office in Crystal City, Virginia to search federal registrations and registration applications.

If these steps don’t identify any problems, there is still a risk that you haven’t found everything, and that companies with similar marks will object to your adoption of the proposed mark. You’ll have to decide whether your situation dictates accepting that risk, or commissioning more definitive searching in the categories described earlier.

HOW SHOULD SEARCH RESULTS BE INTERPRETED?

The question to ask is: would my proposed trademark create a likelihood of confusion among consumers, in view of marks others are using in the marketplace? Whether or not there is a "likelihood of confusion" depends on many factors. Some of the more significant factors are:

similarity of the trademarks or service marks;

similarity between the marketing methods or distribution channels;

degree of care exercised by the typical purchaser; and

likelihood that consumers would expect the original user to expand into your field.

These factors are interrelated. Your mark need not be identical to another to create a likelihood of confusion, especially if the products compete or are sold in the same stores. On the other hand, you may be able to use an identical trademark if the products and their distribution channels are radically different, (for example, with Wonder already in use as a trademark for bread, it might be okay to sell "Wonder" tires, but not Wonder crackers). With famous marks like Wonder, however, you may not be able to use a similar mark under any circumstances.

Another good question to ask in evaluating the potential for conflict is "If I owned the existing trademark, would I take action against someone doing what I plan to do?"

You may be able to decide some of the straightforward cases yourself, but there is no substitute for the experience of a bona-fide trademark specialist when determining whether the mark is close enough to an existing use to create a likelihood of confusion.

HOW ARE TRADEMARKS AND SERVICE MARKS PROPERLY IDENTIFIED AND USED?

Companies use the superscript "TM" symbol to identify valued trademarks which are not yet federally registered. This symbol merely provides notice that the company considers the indicated word or phrase to be a trademark. Similarly, "SM" designates an unregistered service mark. The "circle-R" registration symbol is legally reserved for marks with issued federal registrations. In advertisements, marketing materials, etc. the proper symbol should be placed next to each occurrence of the trademark or service mark.

Provide a generic description of your product in connection with the mark on promotional materials, especially if you offer a unique product or have a very large market share in your field. For example, use "Kleenex brand facial tissue is soft and absorbent," not "Kleenex is soft and absorbent." If customers begin to use your trademark as a generic description for the product, you will lose your rights.

AT WHAT POINTS MIGHT I NEED LEGAL ADVICE?

It is possible to successfully select, adopt, and register trademarks without an attorney, especially if the mark is a made up word having no known meaning, or is a specially designed, fanciful logo. However, based on our experience counseling clients who selected marks and/or filed for registrations without expert advice, many run into trouble. There are two key points where most mistakes occur:

Selecting the mark and evaluating the search results. When you decide to go forward with a mark, you are establishing a key business strategy. The right search strategy and advice at this point can help you foresee and avoid potential problems.

Drafting the description of goods or services in a trademark registration application. The registration application is a deceptively simple document. A carefully crafted description of goods or services can forestall rejections based on existing registrations, rejections based on descriptiveness, and opposition to the registration by other companies. In contrast, an ill-conceived description may lead to rejections and oppositions that could have been avoided, but once started, cannot be overcome.

HOW SHOULD I SELECT TRADEMARK ADVISORS?

Technically speaking, any attorney can represent you in trademark matters at the U.S. Patent and Trademark Office (USPTO). However, as in most areas of law, extensive experience and cutting-edge knowledge of procedures in a particular specialty may produce better, cheaper, faster results. Since the USPTO doesn’t give a special exam to qualify trademark attorneys, how do you find a good one?

To avoid attorneys who promote themselves as trademark specialists without really having extensive experience or training in this area, ask (1) how many trademark registrations they have successfully obtained, (2) how long have they specialized in trademark law, and (3) what proportion of their practice is trademark law.

Copyright 1997 Sixbey, Friedman, Leedom & Ferguson, P.C. - All rights reserved. Used with permission.

Please read the IP Resource Center Ground Rules.


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