In today’s digital world, securing a registered trademark for your business should be a top priority. Although the trademark application process appears simple (it’s just a form!), it’s important to consult with a trademark attorney during this process, otherwise you could put your brand at risk.
The biggest mistake when DIYing trademark applications is the lack of a proper search. The process appears self-explanatory; afterall, the United States Patent and Trademark Office has an easy to find sitelink titled “search our trademark database.” Many business owners input their business name or slogan and upon not seeing a direct hit, unfortunately can believe their trademark will be successfully registered. What many don’t realize is that trademark registration is not based upon another mark being identical, or even near identical, to a mark. Rather, the standard is whether the applied for mark is “confusingly similar” to another based upon sound, appearance, meaning, or similar commercial impression. There are various factors and case law that outline what is considered “confusingly similar”, and trademark attorneys are well versed in this knowledge. For this reason, most attorneys (including our IP attorney, Jess) conduct two searches before starting the application process: a knockout search and a comprehensive search.
The knockout search is what we refer to as the “human search.” Unlike a typical internet search, a knockout search involves searching multiple times using different combinations of terms to see if any marks are similar in sound, appearance, meaning, or commercial impression. Examples of marks that the U.S. Trademark Office found to be confusingly similar are Mr. Clean v. Mr. Rust v. Mr. Stain (cleaning products), Flossies v. Flossbone (dog treats), Frickin’ v . Flip’n Chicken (restaurant). If no direct hits are found in the knockout search, the TM attorney requests a comprehensive search from a third-party vendor. The third-party has advanced search tools and conducts a search of the entire U.S. Trademark database and beyond, including state registrations and common law sources to find confusingly similar marks. The comprehensive search can range from a few hundred to thousands of pages long.
A TM attorney will review the comprehensive search report and write an opinion letter for the client. The opinion letter provides the attorney’s analysis of the likelihood of registration, if there are marks the client should be aware of, and an overall general strategy for how to proceed with the trademark registration process. This strategy could include modifying the mark for a better success rate, filing a cancellation of an existing registered trademark based upon priority of use, waiting to see if a similar mark renews its trademark before filing, etc. Additionally, without the knowledge of a comprehensive search and analysis, filing a trademark application can lead to a cease and desist or infringement claim by putting your mark out there.
So although the application process is seemingly simple, there is a lot that happens behind the scenes. Investing in a trademark attorney to assist you can offset future time and money. Don’t base your brand’s success on luck!
DISCLAIMER: This blog post is meant for informational purposes only and does not constitute specific legal advice or create an attorney-client relationship. Readers should discuss their specific situation and considerations with an attorney.