One of the first questions I ask a new trademark client is “Did you conduct a trademark clearance search?” Sometimes the client will say they searched on Google and found no one using the mark on the internet. Other clients will tell me they went onto the United States Patent and Trademark Office (USPTO) trademark database and searched for the word mark they want to use.
Unfortunately, these types of searches alone are not enough. A trademark clearance search should include searches of different spelling variations and word order variations in all classes of goods or services the client is offering in commerce. Additionally, it is important to look at domain names and to conduct a search of all state trademark databases, since both of these types of searches may reveal businesses using similar marks in just one state.
Why does all of this matter?
The purpose of a trademark clearance search is to make sure no one else is using a similar trademark to sell the same or similar goods and/or services in commerce.
What Do Trademark Examining Attorneys Look at to Determine Whether or Not Marks are Too Similar?
The focus is on the perception of the consumer — not the trademark applicant.
Because of this, the trademark examining attorney is going to be looking at the appearance, sound, connotation, and commercial impression of the trademark. So adding an “s” or a space will not make any difference if the main words are the same (i.e. BRAIN STOP v. BRAINSTOPS).
In addition, the trademark examining attorney is going to examine whether or not the similar trademarks are in similar channels of trade. For example, are both trademarks identified as sources of beverages? If both trademarks are used to market beverages, that is considered a similar channel of trade — even if one trademark is used to sell energy drinks and the other is used to sell milk.
First to Use in Commerce Trumps First to Register
Another concept to understand is that in the world of trademarks, the first to use the mark in commerce has priority — not the first to register the trademark with the USPTO. So a simple search of the USPTO will not rule out trademarks that are being used in commerce but have not been registered with the USPTO.
In other words, it is very possible to obtain a registration with the USPTO only to receive a cease and desist letter years later from a company that has been using the same trademark. Whether or not you or they have priority will depend upon who first used the mark in commerce. So even if you registered three years ago, they will have priority if they’ve been using the mark in commerce for a decade.
As you might imagine, there have been some very heated and notorious disputes that have erupted over who has priority in commerce.
These are just a few of the reasons why a complete trademark search is necessary by someone who is knowledgeable on trademark law. Trademark clients can save a lot of money in the long run for their company if they have a professional conduct a complete trademark search prior to filing a trademark application with the USPTO.