Your product is ready to launch. You’ve selected the perfect name for it. At least, you think you have, until the cease and desist letter hits your inbox, at which you start to wonder whether your Trademark is actually YOUR Trademark.
This is a common enough story and one we never want to have happened to our clients! That’s why it’s important to check the trademark you want to use before you adopt it for your product. We call this process, “clearing the trademark.”
What do we mean by “clearing”? Clearing refers to conducting a search for physically similar trademarks that are offering similar goods/services to you. If two marks are physically similar to each other, and they offer similar goods/services to similar customers, that’s essentially trademark infringement. If we find marks that could be infringing, we’ll counsel you to figure out a different option.
Here are some FAQs we get about clearing trademarks.
Can I do the search myself?
Yes, of course, you can. It’s always good to look online first to check if someone else has beaten you to the trademark. You can also check the Trademark Office’s database for current trademarks: http://tmsearch.uspto.gov/. (Make sure to note the serial/registration number – the results time out fast!) Keep in mind our legal expertise allows us to anticipate what the courts and Trademark Office will consider infringing. You can contact us at the email below for clearance search options.
What if the results I find are from different countries?
Trademark rights are governed on a country-by-country basis. If a brand owner doesn’t have use of a trademark in the United States, it’s unlikely it has any rights to that mark here.
I searched the Trademark Office database and didn’t find anything. Am I safe?
Nope! US trademark rights are a bit of a different bird. In the US, you can have trademark rights without registering a trademark. This is called “common law” trademark use. You’ll always want to check for unregistered trademarks before adopting your trademark.
What if I spell my mark differently than another trademark I found?
It depends on how differently. Slight misspellings, additions/deletions of punctuation, and other nominal differences are generally not enough to distinguish between trademarks. However, if the differences change the meanings between two trademarks, this could be enough (e.g., NOWHERE versus NO WEAR).
What if I find a similar mark, but they’re doing something different than me?
Again, it depends on how different. For example, if you’re providing a mobile app for organizing events, and the trademark you found is for plant nurseries, it’s unlikely consumers will think the products come from the same source. However, if the trademark you found is a mobile app for calendaring meetings, that’s similar enough in function and purpose to be a problem!
If you have other questions about trademark clearance and selection, please don’t hesitate to contact us at trademarkteam@carneylaw.com.
By: Ashley Long