by Michael W. Flynn
First, a disclaimer: Although I am an attorney, the legal information in this podcast is not intended to be a substitute for seeking personalized legal advice from an attorney licensed to practice in your jurisdiction. Further, I do not intend to create an attorney-client relationship with any listener.
Today’s topic is how to search trademarks. Jennifer wrote:
I have what I think is a fabulous idea for a clothing line. I want to make sure there isn’t already a trademark on my product name so I can move forward.
How do I search that out?
Searching for currently trademarked names in the United States is easy. But, determining whether a proposed trademark might infringe on an existing one is more complicated.
First, it is necessary to understand exactly what a trademark is. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. A common example of a trademark is Coca-Cola. The trademark consists of the words “Coca-Cola,” along with the cursive writing and red and white colors.
Trademarks are valuable because they readily tell a consumer where a product comes from. If you see the Coca-Cola trademark on a beverage, you know where the beverage came from. If you like the source, Coca-Cola, then you are likely to want to buy the beverage because you trust where it came from, and have some good will towards the company. By contrast, if you are a Pepsi-person, and see a new drink with the Coca-Cola trademark, you might avoid the product because you do not like Coca-Cola. The main function of the trademark is to give consumers the ability to determine the source of the product.
So, if you are looking to start a new business, then you might want to start with a catchy name and trademark so that your consumers will readily identify your product. The first place to search your proposed trademark is the United States Patent and Trademark Office, also known as the PTO. The PTO website maintains an easily searchable database of all trademarks registered in the U.S., dead or active. In order to find out whether your idea is already trademarked, simply type in the name. The database will return all close matches. For example, if your idea was to create a clothing line called “Cool Clothes,” you would find that there is a dead trademark for that name. There are some active trademarks such as “Pumpkin Hip Clothes for Cool Babes,” a clothing line for babies based in San Francisco, and “With-It Kidz Cool Kids Clothes” based in Conoga Park, California.
However, simply because a trademark is dead does not mean you can use it immediately. A dead trademark registration means that the registrant has not filed the necessary documents and the registration has lapsed. It does not necessarily mean that the trademark owner is no longer using the mark — it's simply not registered. It is possible that there is a company out there selling clothing with a “Cool Clothes” trademark, and that trademark is entitled to protection despite the failure of the trademark owner to properly register it. A trademark owner only needs to use his trademark on his product in commerce in order to establish trademark protection. Registration gives a presumption of trademark protection, but it is not necessary. This is where a generalized Google search might help to find the trademark that is not necessarily registered with the PTO.
However, even if your proposed mark is not registered, and nobody is using your exact mark in commerce, you still might not be able to use the proposed mark if using it would likely cause consumer confusion. Recall that the whole purpose of a trademark is to give consumers the ability to quickly determine the source of a product, so a mark that would confuse consumers as to source goes against this purpose. For example you could not start a new soda company called Caco-Cola, and use cursive writing and a red and white font. A consumer looking at your Caco-Cola mark would likely be confused as to where the product came from. It is too similar in appearance, and is attached to a product that is too similar to the original trademark holder’s product.
There are many other factors that would go into the full analysis of whether a consumer would likely be confused, and I do not have time to discuss them fully today.
But, to answer Jennifer’s question, the best way to search for your proposed trademark is by a general Google search and the PTO’s database. If any similar marks appear trademarked, and if that trademark is being used to sell similar products (i.e. clothing), it is probably better just to avoid the idea. If you tried using a similar mark, and the current trademark holder found out, that holder might start sending nasty cease-and-desist letters and eventually sue. If you had to change your trademark after your launched your business, then you will have lost all the goodwill associated with your trademark and will have to start again at square one. Good luck!
Thank you for listening to Legal Lad’s Quick and Dirty Tips for a More Lawful Life. Be sure to check out all the excellent Quick and Dirty Tips podcasts at QuickAndDirtyTips.com.
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