So, you think you have a new brand name? - The Importance of a Trademark Search

It’s the New Year and you have decided to pursue your new idea, whether it be starting your own company, creating a new product, offering a new service, or rebranding an existing line of business. You think, rightfully so, that a catchy new brand name, logo, or catchphrase will do wonders to draw attention and interest from potential customers. So, you set off on brainstorming potential brands and you come up with the brand name “Catchy Hot New Widget”. So, you send it off to your graphic designer for a final mockup and then slap your “Catchy Hot New Widget” branding all over your new product or service and sit back and wait for the orders to pour in.

Wait….you did a trademark search, right? Oh no? Well, you might be in for a surprise cease and desist letter from the company in Florida that has been using “Catchy Hot New Widget” for their own product since 2007.

If you are like most business owners selecting their first brand name, you probably didn’t do a trademark search. At most, you may have done a Google search, which is a great start but not sufficient to determine the potential risks of an adverse claim against your new brand.

A comprehensive trademark search is a cheap investment in the future of your brand name.

What does a comprehensive trademark search cover?

A comprehensive trademark search will perform a search of 1) USPTO trademark registrations and pending applications, 2) state trademark registrations, 3) state business registrations, 4) domain name registrations, 5) social media accounts, 6) websites, and 7) App stores. A full comprehensive trademark search is the best way to have confidence that you have found potential conflicts.

Evaluating potential Conflicts - Likelihood of Confusion

Once you have collected all of the potential conflicting marks, you will need to do an analysis of the potential conflicts. In trademark law, the conflict analysis is done by analyzing the “likelihood of confusion” between the proposed mark and the potential conflict.

To do this, we look at the following factors:

1) The similarity or dissimilarity of the marks as to appearance, sound, connotation, and commercial impression.

2) The relatedness of the goods or services.

3) The similarity of trade channels.

4) The conditions under which consumers will view the marks.

5) The number of other similar marks in use.

This analysis can be subjective, but the most important factors are the first two. An experienced trademark attorney can assist you in evaluating the factors and coming to a decision on how to proceed. However, in general, if there is a strong similarity of the marks and the goods/services are in any way related, the trademark applicant should proceed with the proposed mark with caution. A trademark search is an important tool for evaluating potential brand names and avoiding a gotcha moment with your new favorite brand name.