Trademark searches: why and how to do them and what to look for

You want to launch a new line of handbags under the name ABC. Someone tells you that you need to “clear” or “search” that name. What does that mean, why should you do it, and how do you go about
doing it?

You will be using ABC as a trademark to identify your handbags. (If you were using ABC to identify intangible services, such as hotel or banking services, you would be using ABC as a “service mark.”)
Before you start imprinting ABC on inventory, ads, and promotional materials, you need to assess two risks. The first is the risk that by using ABC for your bags, you will be infringing on or diluting someone else’s trademark or, even if you are not actually doing so, you will be vulnerable to an infringement or dilution claim. The process of determining whether a proposed trademark or service mark infringes another mark
is called “clearing” the mark or clearing the rights. The second risk is that you will be unable to obtain a registration in the United States Patent and Trademark Office (“PTO”).

A. Risk of infringement or dilution. Your trademark (or “mark”) will infringe another mark if consumers are likely to think that your ABC handbags (i) come from the same entity that provides other ABC products or services; (ii) are somehow related to or affiliated with other ABC products or services; or (iii) are endorsed by the provider of other ABC products or services. If consumers are likely to come to one of these conclusions, we say that there is a “likelihood of confusion.”

In trademark infringement cases, to decide whether a likelihood of confusion exists, courts consider a list of factors that includes the strength of the first user?s (or “senior” user’s) mark; how similar the marks themselves are to each other visually, aurally, and in meaning; the proximity of the parties’ respective goods or services (how closely related they are); the sophistication of the relevant consumers; the channels of distribution (how and where both parties’ goods are sold); and the second user’s intent in choosing its mark. Likelihood of confusion between two marks is possible even if the two marks are not being used for exactly the same goods or services. In that case, the question is whether consumers are likely to think that the first user of the mark has expanded its offerings to include the goods or services that the second user is selling.

Infringement can result from confusion that creates initial consumer interest–i.e., that motivates someone to pick up your product in the first place–even if the consumer realizes before he buys anything that what he is buying comes from you, and not the senior user. For example, if someone picked up one of your ABC handbags in a store because he thought it was related to another line of bags with a similar name, and before he bought the book, he realized that your ABC bags in fact had nothing to do with the other handbags, but he decided to buy one of your ABC bags anyway, then, in effect, you would have obtained a new customer by using someone else?s mark.

A “second user,” or “junior user” (which in this case would be you), has a legal duty to choose a mark that is not likely to be confused with someone else’s mark. So, even with a close call, the advisable course is to choose another mark. Another point to consider is that whether or not your use of ABC actually infringes anyone else’s mark, if there are too many handbags or related products with the name ABC or similar names, ABC will not distinguish your bags in the marketplace.

Trademark dilution, as opposed to infringement, occurs when someone uses a mark that someone else is using for entirely different goods or services, but the second user’s use of the mark tends to weaken the mark’s distinctive cachet. For example, use of the mark TIFFANY’S for a low-priced pizza chain would dilute the famous TIFFANY’S mark for jewelry, even though no one would think that the jewelry company had anything to do with the pizza chain. Under the federal dilution law, you cannot bring a claim for dilution unless your mark is “famous,” which means nationally known, although many state dilution laws do not have that same requirement.

B. Risk of being unable to obtain a federal registration
Why does it matter whether you will be able to get a federal registration for ABC? A federal registration would give you the benefit of a legal presumption that you have the exclusive right to use the mark ABC in the United States for books and other goods that would be considered related to pocketbooks (or, other goods that a handbag company reasonably could be expected to sell, such as wallets). This presumption would give you a big advantage if you wanted to sue someone else for trademark infringement. It would put the burden on the other party to prove that you did not have the exclusive right to use the mark in this country, instead of your having to prove that you do have that right. Proving such a proposition can be hugely expensive. Having a federal registration also puts the burden on the other party if someone wants to sue you for trademark infringement. If you cannot obtain a federal registration for ABC, you will have a much more difficult time deterring or stopping others from using ABC for similar goods. Most state registrations will not give you the benefit of this presumption.

C. What the search needs to cover
Many people think that they can clear a mark by running a Google® search or checking the PTO online database at www.uspto.gov.

This is not correct. An Internet search is never sufficient to clear trademark rights. Even in this day and age, there are plenty of companies that do not have Web sites and have not been written about in the online press. Even companies that have Web sites do not always update them with their new products as quickly as you might think.

A search in the PTO database is not sufficient, either. That database is always weeks out of date (and 30,000 new applications are filed every day). Also, the PTO database contains only marks that are registered or are the subject of pending applications in the U.S. Trademark Office. Some people apply to register their marks only in their home states. Many never bother to register at all. So you rely only on the fact that ABC does not show up in the PTO database as a trademark for handbags, you may well find yourself sued for infringement by someone who has been using ABC for ages on pocket books (or related products) but just never got around to registering it. Moreover, if you are found liable for infringement
and you did not do a full search (see below), the court may make you pay additional damages for
willful infringement.

You may be wondering how someone can sue you for trademark infringement without a registration. In the United States, you can acquire trademark rights in a mark only by actually using it. If someone has used a mark for years but never registered it, and then you start to use the same mark or a similar mark for similar goods or services, the first user can sue you for infringement based on common-law trademark rights. Even if you get a registration, someone with superior common-law rights can petition the PTO to cancel it.

A PTO database search is useful for conducting a “knock-out” search, which is a search to see if someone
is using the identical name for identical products or services. If you find that someone else is using ABC for handbags, you would be well-advised to forget that name and choose a new one except in certain circumstances. But if a “knock-out” search comes up clean, or is inconclusive, the next step is to order a “full search” from a company that is in the business of preparing them. (In some cases, depending on a number of factors, you would be better advised to order a variant of the full search, such as a brand identity search.) Two search companies that have excellent reputations are CCH-Corsearch and Thomson & Thomson.

A full search on a standard turnaround (four business days) currently costs about $600.00, including tax. A brand identity search or any other search that covers more ground than a regular full search will cost more, as will a search that comes back to you on an accelerated schedule.

D. What to consider in reviewing a trademark search
There are many issues to consider in reviewing a full search. If you find a federal registration or application for a mark that is similar to yours, its relevance to your trademark will depend on several variables. Some of these variables are the status of that registration or application (where it stands in the application process or in terms of post-registration filings), the classes of goods that it covers (goods and services in federal applications are classified according to 45 “international classes”), and whether the it includes a disclaimer of certain words. In addition, there may be specific legal precedents that affect whether your mark will infringe someone else’s mark. For example, there are cases that address the question of whether one record-label name infringes another, and cases that consider the question of whether a mark used for alcoholic drinks will infringe a similar mark used for non-alcoholic fruit drinks. You also need to be aware of the kinds of differences that are not enough to preclude a likelihood of confusion between your mark and someone else’s mark. MEDIFAX and MEDIFACTS, both used for medical information services, are not sufficiently different just because one ends in FAX and one ends in FACTS. You also need to know what kinds of products and services may be considered related to yours even though you might not think they have anything to do with each other, and which classes of goods the PTO considers to be inherently related.

Even a full search will not give you a 100% guarantee that you will not infringe anyone else’s mark or that you will be able to obtain a federal registration for ABC. Although such search reports are generally considered comprehensive and highly reputable, it is still possible that another party whose name or products did not show up in the search report is using ABC or something like it for handbags or for related goods or services. Also, most search reports will not cover the last three months of filings in the PTO, which, as we have seen, means that they do not reflect thousands of newly-filed applications. So by the time you file your application, it is possible that someone may have filed an application that will conflict with yours, which you will discover only after you have filed the application.

Nevertheless, a full search, reviewed by an experienced trademark lawyer who knows what to look for, is the best assurance you can get that you are free to use ABC as a trademark for handbags. And although trademark clearance can be expensive, even the combined cost of the search and the attorney’s fee is almost certain to be much less than the cost of responding to a cease and desist letter, let alone the cost
of actually defending against an infringement suit.

© 2004 Jessica R. Friedman