Commentary

Trademark Considerations When Building A Brand

The word “brand” is used broadly as a business buzzword. Comprised of a company or product name, a brand acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and consistent level of quality. 

This article addresses the beginning of the brand protection process — when potential brands are conceived. We are purposeful in writing “potential brands” in plural form, because it is recommended to have multiple candidates that function as alternatives in case the most preferred candidate isn’t available. 

Once this list is determined, 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, research who owns it and their intended use.

Also try searching the U.S. Patent and Trademark Office’s free website database. Enter www.uspto.gov into your browser and select “Search Trademark Database.” The USPTO’s Trademark Electronic Search System isn’t intuitive, but you should get a sense as to whether the proposed mark is registered or applied-for, and in relation to what products or services. This initial search shouldn’t be viewed as a sufficient basis for making an informed decision about whether the proposed mark is available for use and registration. You may supplement the USPTO search by searching for the term with a well-known search engine.

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Whether what you find is a “problem” might be obvious or a question for a trademark lawyer. The legal standard is “likelihood of confusion,” which requires consideration of numerous 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, which is subjective.

If the proposed mark survives the first phase of review, it’s recommended to commission a “full search” that is performed by a trademark research firm. These broader searches result in large reports that provide a more detailed accounting of the landscape of potentially conflicting marks. These searches are more costly, but can reveal relevant applied-for, registered and unregistered marks that you didn’t turn up via online searching. 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. 

There is no such thing as a perfect trademark availability search, and there are inherent database currency limitations that mean there may be recent third-party filings for relevant marks that cannot yet be discovered in the searched databases. Trademark research entails taking reasonable steps in view of risk tolerance and budget to manage and limit your blind spot as to potential conflicts. 

Two final pre-filing, pre-adoption diligence pointers for those doing business outside the U.S.: First, consider whether your mark might have an unintended, negative connotation in foreign languages. Second, if establishing foreign rights is important, foreign trademark research should be carried out in parallel with the U.S.-specific research. 

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