Searching Trademarks--Let the Searcher Beware

Getting the right name (or trademark) for a product or service is a very important part of the process of attempting to assure the success of that new product or service. Part of the name/ mark clearance process involves the legal issue of searching to see if another or others have adopted, used, or registered a similar name for a similar product. Before a trademark is cleared for use on a product or service, it is vital that a trademark attorney give an opinion on whether the use of the proposed trademark will violate others’ pre-existing rights and whether the trademark will be available for federal registration. This judgment is made by reference to a trademark search.

Once relevant marks are found, it must be determined whether there will be a “likelihood of confusion” between the proposed mark and the relevant marks. The factors in the likelihood of confusion analysis are, among others, a comparison of the pronunciation, appearance, and meaning of the marks, and a comparison of the product (or services) involved, as well as the channel of trade (i.e., wholesale, retail) in which the products or services flow.

In order to uncover relevant marks, trademark attorneys particularly rely on trademark searches done by commercial searchers such as Thomson & Thomson or NameProtect. These commercial searchers maintain databases of all federal and state trademark registrations and applications, as well as common-law usage databases taken from trade directories, trade journals, and telephone books. The commercial search firms also have methods of searching the Internet to uncover domain name and textual uses of the searched mark. The trademark attorney typically will order a search from the commercial searchers and use that as the basis of his or her opinion as to whether a proposed mark is available for adoption, use, or federal registration.

With the ready availability of the United States Patent and Trademark Office on-line database of federal registrations at uspto.gov, marketing and sales people (as well as others involved in the naming of products) may be lulled into a false sense of security by believing that a cursory search of this database can be enough to clear a potential mark. Nothing could be further from the truth. There are numerous inherent limitations to doing just a uspto.gov search, and even if relevant pre-existing marks are found, laymen do not have the training or experience to make a reliable legal analysis of these listings to determine if a mark is clear for usage.

For example, if one was trying to determine if the mark ROCKS was available for a new widget, the uspto.gov website could be accessed. If the laymen could simply enter the word ROCKS into the search engine, relevant listings would be missed. Most notably, the search engine would not find phonetic equivalents, such as ROX, which could be very relevant. In this case, if someone else would have registered ROX for widgets, this registration would definitely prevent one from registering the mark ROCKS for widgets. Again, the uspto.gov website search would give one a false sense of security, and if the mark ROCKS was subsequently used, that user would be in grave danger of infringing the pre-existing ROX mark.

The uspto.gov database also, by definition, does not include common-law usage and state registrations. Those marks could be very relevant in any clearance determination.

The uspto.gov database, however, is an excellent screening tool for eliminating exact pre-existing marks. One very effective method for determining a new trademark for a product is to compile a list of seven to ten proposed new marks and list these in priority order. The uspto.gov database can then be accessed to eliminate exact pre-existing registrations. This may narrow the list to two or three marks, which can be candidates for more detailed searches by commercial searchers and subsequent opinion from a competent trademark attorney.

There may be a temptation for lay persons (marketing and sales people, for instance) to order searches from commercial searchers and then attempt to analyze the results themselves. Only experienced, knowledgeable trademark attorneys are competent to read and analyze searches and to provide opinions on mark usage and registration. Trademark law has many subtleties and nuances, and the case law is constantly changing. It would be rare indeed to find any non-legally trained and experienced lay person who could competently and correctly analyze a search report.

The Internet is certainly a wonderful tool for trademark searching; however, in the important job of naming a new product or service, the skills and experience of a competent trademark attorney are required.

David V. Radack is vice-chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail abs@escm.com.