Clever and memorable branding is key for businesses looking to stand out in the marketplace. A common mistake business owners make in their branding is assuming the name they have selected will be available when they start the company and register the trademark.
In the U.S., businesses and individuals can register their trademark on a state and federal level. Regardless of whether a business is a large corporation with 5,000 employees or a small shop with one employee, infringement on a trademark (even unwittingly), is a costly misstep whether it is the cost to rebrand, having to defend through litigation, or both.
To avoid this, it is important to conduct a trademark knockout search prior not only to registration, but also business brand and product name creation. Knockout searches check for conflicts between a business product or brand name and already existing businesses or marks. Using an advanced algorithm, a trademark attorney searches all fifty states and national databases for products and services that look like, sound like, feel like, or may be similar to a prospective trade or service mark. These algorithms also search in specialized areas such as software, pharmaceuticals, alcoholic beverages, retail, app stores, news stories, and much more. This can significantly improve the chances that a trademark application is accepted by the United States Patent and Trademark Office, or “USPTO” and will highlight prior users of the same or similar mark and business names.
Not conducting a knockout search prior to forming a business or creating a brand can have negative consequences on starting and growing a business. Should a company use a brand name that infringes on an existing trademark, it is more likely the business will receive a cease and desist letter, or worse, be sued for trademark infringement and damages. This letter or lawsuit could come quickly after a business has established branding for its name and products, or it could come years later forcing the business to rebrand and waste years of established goodwill and market recognition.
Some business owners opt to conduct a cursory search for conflicting marks to avoid obviously problematic marks. The USPTO’s Trademark Electronic Search System, or “TESS”, allows for people to look up exact-match, existing trademarks in an effort to avoid conflicting marks. This type of search will not search alternate spellings, misspellings, or alternate but similar words and it only searches that one database. However, a thorough “knockout” search conducted by an experienced trademark attorney entails a much more comprehensive assessment of existing marks, and also includes parsing through information in State databases, web domains, court records, municipal databases, as well as many other sources.
Interpreting results is normally very complex and requires an understanding of the current trademark case law trends. Oftentimes the federal trademark database, TESS, may seem to indicate a mark is not in conflict with existing marks when this is not the case, and the actual level of infringement risk a business is taking on may be much more than what is apparent. For example, in the case of logos and symbols, design codes also come into play which can be complicated and confusing.
Our firm can help you with questions or inquiries regarding knockout searches for a company name, brand or product. If you have questions, please contact any member of our firm via our website or call us at 585-730-4773. Please note that any embedded links to other documents may expire in the future.
This Legal Briefing is intended for general informational and educational purposes only and should not be considered legal advice or counsel. The substance of this Legal Briefing is not intended to cover all legal issues or developments regarding the matter. Please consult with an attorney to ascertain how these new developments may relate to you or your business. © 2021 Law Offices of Pullano & Farrow PLLC
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