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Potential Plaintiffs
A trademark search shows possible plaintiffs. Does your business’ trademark cause a likelihood of confusion with other trademarks that are already registered or in use? It is impossible to judge without a trademark search.
Potential plaintiffs are those whose marks are either registered before your mark or in use before your mark. Many businesses find themselves as defendants in either trademark oppositions in the Trademark Trial and Appeal Board or in trademark infringement lawsuits in federal district court because of the lack of a trademark search. Finding these potential plaintiffs helps to judge the risk of being a defendant in a trademark dispute.
Alternatively, if a business has already registered a trademark while your mark is in use, then you will need to dispute that registration. Is it worth that dispute or is it more economical to find a new trademark?
Analysis of the Trademark
A trademark search reveals how strong your trademark choice is. For example, if there are 50 other similar trademarks in economically related goods/services, then the trademark you chose is particularly weak, especially if the trademark itself is related to the goods/services the mark is to represent.
If a trademark search shows that a trademark is in a crowded field, then it may be better to find a new mark. Fanciful trademarks are stronger and will probably live in a less-crowded field, making them easier to police and enforce.
There are five levels to trademark strength.
Fanciful marks
- A fanciful/inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or “fanciful” word. For example, “Kodak” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.
Arbitrary marks
- An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. “Apple” for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term “salt” has no particular connection with such products.
Suggestive marks
- A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. An example of a suggestive mark is Blu-ray, a new technology of high-capacity data storage.
Descriptive marks
- A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace (see further below). Lektronic was famously refused protection by the USPTO on ground of being descriptive for electronic goods.
Generic marks
- A generic term is the common name for the products or services in connection with which it is used, such as “salt” when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which may generally be used by anyone—including other manufacturers—to refer to a product without using some organization’s proprietary trademark. Marks which become generic after losing distinctive character are known as genericized trademarks.
Here is a full transcript of the video blog:
Hi there. I’m Anthony Verna, managing partner of Verna Law PC where we focus on intellectual property where we’re a full service firm. Recently I had a referral for a colleague for a potential client and this potential client had not done a trademark search, which reminds me that it’s important to do what trademark search, why? Well, number one, you want to find out what other trademarks are out there in your set of goods and services. In this particular example from this referral, this applicant received a rejection from the patent and trademark office. Why? Number one, the trademark was very similar to another trademark and to the set of goods and services. If it’s exactly the same apparel, in trademark world, the apparel is apparel. Whether you’re making swimsuits or Tuxedos or underwear. All we do is consider apparel to be apparel. So that brings me to my next thought about trademark law, which is we do a trademark search because I don’t want you to fall into love with your trademark.
If we find something out there, I want to be able to make sure one, that you’re able to pivot and change your branding. And two, especially if it’s early enough, you know that you as a company, uh, have that ability to make that pivot. But also if you’re going to file a trademark and you’d get this rejection three, six, nine months down the road, well now as a business, you’ve wasted three, six, nine months of marketing, of advertising, of, of whatever else you are doing instead of now you have to pivot. And that’s part of the real key for doing a trademark search. Yes, it’s more expensive in the beginning. Yes, there’s more work done in the beginning, but what we’re able to do with giving a trademark search before use of a trademark before ever filing that trademark is advice. And that advice is how is your mark going to register?
Is there going to be another, a company out there that can block your mark? Is there a potential plaintiff out there that could possibly see you just for filing a trademark application? And those questions are complex. Those questions required data set. And so I, I want to do that search now and instead of wasting three, six, nine, I’ve even had clients come to me saying that their on their final rejection from the patent and trademark office, what can they do? And at that point, they’ve probably wasted 18 months not being able to get a brand that they fallen in love with. So we’d like to do a trademark search and we urge you not to fall in love with the trademark just in case it’s something that we can’t do. So let’s get data. Let’s start from the very beginning. Let’s counsel you from the very beginning. If you can use that mark in commerce before we ever register again. Anthony Verna Managing Partner of Verna Law, PC.