Trademark Basics & Clearance Searches
What is a Trademark?
Trademarks and service marks are marks, such as comprising words or logos, which represent a source of goods and services. The name "Coca-Cola" represents a particular concoction of ingredients sold by a certain company. By viewing the trademark, a consumer can recognize the source of the goods. Trading off of another's name and goodwill associated with the name is trademark infringement. Even more, using a similar name or logo, that is, one in which would confuse a consumer, is also trademark infringement.
Why Conduct a Trademark Clearance Search?
Simple - it is important to know who is using the name before you pour marketing, manufacturing, and legal fees into a name. If your trademark will not stand, then everything you've put into behind your name is potentially lost. Still further, even if you have a domain name or a registered trademark with the U.S. Patent and Trademark Office, you still are not assured that you can keep the name!
For example, in a 1996 case (International Star Class Yacht Racing Ass'n v. Tommy Hilfiger U.S.A., Inc., 80 F.3d 749 (2d Cir.)), a full clearance search was recommended and was not carried out and the court went so far as to consider that it may have been bad faith to keep using a mark from the time the plaintiff notified the defendant of the mark. Bad faith means high damages in addition to the loss of all the marketing dollars put into the name! This could have been avoided by spending a few extra dollars on the research up front.
Preliminary Trademark Search
A Preliminary, or "Knock-Off" Search is inexpensive and generally used to decide amongst a few names. Such searches involve keyword searches such as through the U.S. Patent & Trademark Office database and regular search engines and are accompanied by a preliminary opinion. Generally speaking, at least this level of search is conducted on your name before filing a trademark application by this law firm.
Full Clearance Search
As noted above, this is the preferred type of search and is recommended before filing a trademark application. Such a search comprises not only keyword searches but also "Soundex" searches which are searches of uses in commerce which sound the same as your proposed mark. For example, if you want to use the name "kit kat" a full clearance search would also search, "cit cat" and "kite cat".
Further, a full clearance search is a search of periodicals, domain names, the internet, and federal and state trademark registrations. Such a search generally results in about 150 - 300 pages of results! This law firm will evaluate the report and write an opinion letter as to likely problems, if any, with your name so you will know ahead of time what to expect.
Contact us to begin your trademark filings today!