IP Law Bulletin

Pre-Use/Pre-filing Diligence
We start at the beginning – when potential brands are conceived. We are purposeful in writing “potential brands” in plural form, because it is highly recommended that one have multiple candidates that function as alternatives to one another in the very possible event that the most preferred candidate is not available for safe use. 

When you have arrived at a list of at least several candidates, consider registering obvious variations of each candidate as domain names. If in attempting to do so you discover that the most important domain name (usually the .com version) is already registered, that should give you pause and cause you to research who owns it and what their intended use is (which is not always easy to determine). 

We next recommend you engage in initial diligence by searching the U.S. Patent and Trademark Office’s free website database. Enter www.uspto.gov into your browser and click on “Search Trademark Database.” The USPTO’s Trademark Electronic Search System is not intuitive, but after some trial and error you should be able to get a sense as to whether the proposed mark already is registered or applied-for, and in relation to what products or services. This narrow initial search is often referred to as a “knock-out” search, and should not be viewed as a sufficient basis for making an informed decision about whether the proposed mark is available for use and registration. You may consider supplementing your USPTO search with a search for the term using a well-known search engine, such as Google.

Whether what you find is a “problem” might be obvious, or otherwise is a question for a trademark lawyer. The legal standard to be kept in mind is “likelihood of confusion,” which requires consideration of a number of contextual factors. The most important two (but not the only) factors in the analysis are how similar the two marks are and how related the respective products or services are. The likelihood of confusion test will be the subject of separate blog posting in this series; the factors are subjective, and experience in reading court decisions, applying them and drafting arguments about them are all-important in effectively assessing the availability of a proposed mark.

If a “knock-out” search reveals no obvious conflicts, more comprehensive branding and trademark research is recommended when investing in your brand. This might entail having a lawyer or paralegal conduct more detailed online research for conflicting registered or unregistered marks (using commercial online databases that entail enhanced database query functionality as compared with those provided by the USPTO). In the United States, establishing trademark rights does not require filing or registration, so it is important to search for potentially conflicting unregistered marks in addition to registry searching as part of the diligence process.

Additionally or alternatively, it also is recommended that you commission a “full search” that is performed and compiled by one of several trademark research firms. These are much broader searches resulting in reports, often the size of phone books, that provide the most detailed accounting of the landscape of potentially conflicting marks. These searches are more costly, but at times reveal relevant applied-for, registered and unregistered marks that you or your lawyer did not turn up via online searching. 

There is no such thing as a perfect trademark availability search, and there are inherent database currency limitations that mean there might have been very recent third-party filings for relevant marks that cannot yet be discovered in the searched databases. Trademark research is about taking reasonable steps in view of risk tolerance and budget to manage and limit a blind spot that cannot be completely eliminated. If your risk tolerance is low, even if your budget is modest, reducing the blind spot as much as possible by obtaining and reviewing a “full search” is recommended.

Two final pre-filing, pre-adoption diligence pointers for those doing business outside the U.S.: First, now is the time to consider whether your mark might have an unintended, negative connotation in foreign languages. For example, perhaps when it is pronounced it sounds like a vulgar word in the local dialect in an important marketplace. Second, if establishing foreign rights is important, foreign trademark research should be carried out in parallel with the U.S.-specific research. It is possible to search foreign trademark registers online in parallel with online searching in the U.S., and it is also possible to arrange for more detailed country-specific research through local agents.

Branding and Trademark Series:
Branding and Trademark Series: Federal Trademark Registration Benefits – Beyond the ®