HOW TO EFFECTIVELY ANALYZE
A TRADEMARK SEARCH REPORT
BY ILENE B. TANNEN
Trade and Service Marks are identities in a crowded world. They provide faces in a faceless world. In some cultures, they were adopted solely to identify source. And with identity came liability. In others they are/were accorded the mystical importance of magic names. We operate in a culture dominated by considerations of wealth and commerce. Marks are among other things, the surfactants of trade. Good ones are invaluable. Bad ones are a liability.
I. THE SEARCH REPORT IS ONLY EFFECTIVE IF IT COVERS:
2. the correct goods/services; and
3. the correct operational context.
I. THE PURPOSE OF EVALUATING A TRADEMARK AVAILABILITY SEARCH IS:
2. to determine whether a mark will stand apart;
3. to determine whether a mark is available for registration; and
4. to determine whether a mark is a sound platform for present and future investment.
I. TO PROPERLY EVALUATE THE SEARCH REPORT, IT IS IMPORTANT TO KNOW THE FOLLOWING:
2. the channels of trade through which the goods/services will be sold or distributed;
3. the advertising media most likely to be used;
4. whether the mark has meaning in another language;
5. the origin of the mark - how was it selected; is it a coined term; is your client aware of similar terms;
6. whether the mark is an acronym;
7. whether the mark will appear with a logo or other matter i.e., client's name;
8. whether the mark will be used as a product specifier, corporate name, house mark and/or domain name;
9. an understanding of what the client's immediate goods/services are so you can understand what goods/services might be related or equivalent to them;
10. whether the mark in any way describes or suggests the goods/services; and
11. the client's competitors.
I. TO HELP WITH YOUR APPROACH IN EVALUATING THE SEARCH REPORT, IT IS USEFUL TO KNOW HOW THE MARK WILL BE USED
2. If the mark is used on a high ticket item which requires face to face sales calls and meetings to sophisticated purchasers, the mark may not be as important to making sales, and therefore, a less conservative approach would be appropriate.
3. Will the mark be used by the client or will the client license the mark to others? If the client intends to license it to others, difficulties will impact the client as well as the licensee and therefore, you should be conservative in your review of the search report because of the greater potential liability.
4. If the mark will also be used as a corporate name and/or domain name, be cautious in your review as a claim of infringement could be devastating on the client's entire identity and ability to operate.
REVIEWING THE SEARCH REPORT
You must be able to separate the relevant marks from those that are not relevant.
I recommend reviewing the search report twice before coming to any conclusions. On the first review, you get the lay of the
land; an overview; tab those marks which are similar in sight, sound and/or meaning to the client's mark as well as marks
which appear to be used for identical or related goods.
After the first review you will be able to identify whether (1) the client's mark contains a weak prefix, suffix or other trademark
element which suggests that the cited marks and names as well as the client's mark may be weak with a narrow scope of
protection; or (2) whether the client's mark contains terms which are distinctive thus enabling the marks and/or names
identified in the search report to have a broad scope of protection.
On the second go around, you have a better picture of the marketplace and can now zero in on those marks, names and
domain names which could pose as obstacles to use and/or registration.
When there are several marks, names and domain names which seen in isolation present potential obstacles to registration,
it is helpful to set them up in a chart so you can look at them altogether and then assess the prior marks vis a vis the
proposed mark to get a focused picture of the potential problems.
CHECKLIST OF CONSIDERATIONS WHEN REVIEWING A SEARCH REPORT
2. Look at abandoned applications - when were they abandoned; why were they abandoned; if they are use-based applications, the mark could still be in use despite the fact that the application was abandoned; was an opposition proceeding involved and if so, who is the opposer; what is the opposing mark and does the opposer have a history of opposing marks similar to the client's mark- the report may give you some information in this regard to give you an idea of the obstacles the client may face if it should seek registration of a similar mark.
3. Look at canceled registrations - when were they canceled and why were they canceled; if cancellation was recent, it is possible that the mark is still in use especially if the cancellation was inadvertent.
4. Look at expired registrations - when did they expire; is there any information in the common law section of the report which would give the impression that the mark is still in use.
5. Do not overlook identical marks which are used for different goods/services - if they are well-known marks, they could pose as obstacles to use and registration; consider dilution.
6. Look at marks which are phonetically similar in spelling to the client's mark - if they are used for similar or related goods/services, they could pose as obstacles to the client's use and registration of its mark.
7. Marks that are the reverse of the client's mark could pose as obstacles if they are used for similar or related goods/services.
8. Look closely at competitors' marks - do they all have a similar prefix or suffix to describe the same goods/services.
9. Does the search report identify prior marks owned by the client which are similar in sight, sound and appearance to the mark being searched and thus strengthen the client's claim to distinctiveness.
10. Does the search identify a third party which owns a family of marks with a particular prefix, suffix or other trademark element - if so, and the client's proposed mark contains the same prefix, suffix or other trademark element for similar or related goods/services, the trademark owner could try to block the client's use and registration of its mark.
11. Consider whether any of the cited marks have a similar connotation to the client's mark, which could be raised as an objection.
12. Is the client's proposed mark included within any of the cited marks - if so, is the additional trademark element in the client's mark distinctive so as to distinguish the parties' marks; if not, and the goods/services are similar or related, there is a potential for objection.
13. If the client's mark is an acronym, make sure to consider cited marks formed from the words signified by the acronym.
14. A federally registered mark is presumed to have nationwide rights in scope. Therefore, even if use of the mark is currently restricted to a small locale, the prior trademark owner could enjoin the client's use outside its locality if it is likely to enter the junior user's territory.
15. Do not ignore Supplemental Register registrations as these marks could have obtained secondary meaning and therefore, could pose obstacles to use as well as registration.
16. State registrations should not be discounted as the registrant has some form of rights that could be asserted - investigation may be required to determine the geographic use of the mark and the state's trademark law regarding rights afforded by state registrations to determine the impact a state registration may have on the client's use and registration of its proposed mark; in some states, registration preempts throughout the state irrespective of the area of use (e.g. Texas).
17. Prior common law rights may significantly limit the client's ability to use and register a mark and therefore, should not be ignored. Common law rights generally extend only to the geographic region where used and for the type of oods/services on which the mark is used.
18. Look at dates of articles in the common law portion of the search; if a potentially relevant citation shows up in an article, if possible, obtain a complete copy of the article for review before concluding whether the citation is relevant.
19. When evaluating marks for relevance, consider who the trademark owner is, i.e., is it a well-known entity, a litigious entity.
20. Carefully review domain name registrations - domain name registration alone does not create trademark rights (see, Brookfield Comm., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036; 50 U.S.P.Q. 1545 (9th Cir.); but a domain name used in connection with a Web site relating to a business, good or service which is similar or related to the client's goods/services, could be a common law obstacle to the client's use and registration of its mark.
21. It is important to conduct at least a preliminary investigation (i.e., a telephone call, internet search, D&B report, order filehistory, etc.) of relevant citations identified in the search report when it is unclear as to (1) whether a mark or name is in use;(2) the goods/services on which a mark or name is used or (3) the marketing channels of the goods/services covered by the cited mark or name. Without knowing this information, you cannot provide a complete opinion.
22. Is the client's mark at risk from a claim of dilution?
In sum, the client's adoption of a new trademark is an auspicious event. Frequently, searches are considered pedestrian exercises to be conducted by the most junior of associates. But in point of fact, searches are best reviewed by more senior intellectual property practitioners with the refined judgment, knowledge, experience and the prescience to render opinions regarding availability. A favorable opinion rendered after evaluation of a search report will likely set in motion your client's adoption and investment in a new mark. That mark can determine their financial future. Our job as trademark practitioners is to provide the client with sound advice and a reasoned legal prediction on which to make a reasonable business decision, striking a balance between imprudent enthusiasm and excessive risk aversion.