If you’re reading this, chances are I didn’t scare (or bore) you away from the first three posts of this four-part series. You’re a brave soul. Or maybe just really dedicated to ensuring you go about the naming process correctly.
You’ve learned about the importance of assessing similarity in marks, why you can’t register a famous brand for something unrelated, and why descriptive marks are bad news. So let’s say you do come up with something that is unique and not descriptive. How do you go about the searching process?
Many business owners think the logical place to start is the search engine on the U.S. Patent and Trademark Office (USPTO)’s website, which is called the Trademark Electronic Search System (TESS). To conduct a trademark search, you type in the business name you chose and no matches. It’s available, right?
Don’t register your domain name and start branding everything just yet.
Myth 4: I don’t see my chosen trademark on the U.S. Patent and Trademark Office search results, so that means it is available.
There are a few pitfalls in relying only on TESS to search the availability of a name. First, the matches are literal and spelling-specific. To take the Starbucks example from a previous post, if you typed in “STARBUCKSS” (with two s’s), you would have no matching results. This is extremely misleading, as we all know Starbucks is taken. Never mind that it is already registered, but it is also a famous mark (see the last post on Myth #3). Yet, TESS does not account for even slight changes in spelling. So if the brand name you’re searching is taken by someone else and is just spelled slightly differently, you are still at risk for a refusal by the USPTO and probably an opposition from that third party as well.
So what’s an entrepreneur to do? The answer is to have a trademark attorney run a search report for you. Lawyers who specialize in trademark (we’ll discuss how to choose a trademark lawyer in my next post) have access to specialized and comprehensive search engines, subscriptions, and reports. Depending on your need, we are able to run a thorough query on the mark, accounting for similarities and differences across the board with regard to spelling, phonetics and sound, appearance and sight, and even foreign equivalents. This lets us know who is using the mark (or a mark similar to it) and what they are using it for so that we can assess the risk of advising you to move forward with it or not. There are even reports available to assess common law (unregistered) uses, so you can have a heightened level of reassurance before you apply.
Entrusting your company’s brand to a trademark lawyer is no small decision. Join me next time as I help you navigate the process of choosing the right trademark lawyer for you.
Sonia Lakhany is an intellectual property attorney at Lakhany Law, PC. She specializes in trademark and copyright law, teaches and is a frequent speaker and blogger. Sonia is also active on several boards and committees in the Atlanta legal community.
