Trademark Searches

• Author: Joshua Braunstein
• Profession: Corsearch (a Wolters Kluwer Business)
• Pages: 203-229

C12 09/02/2011 12:59:7 Page 203

CHAPTER 12

Trademark Searches

Joshua Braunstein

Corsearch (a Wolters Kluwer Business)

Once a trademark name has been selected, a trademark search is a necessary and

fundamental step in the clearance process. Trademark searching is one of the

easiest and most cost-effective steps you can take to identify potential problems, get

a closer look at the ‘‘commercial landscape’’ where the mark will be used, and man-

age the risk of bringing a new trademarked product or service to the marketplace. As

trademarks and brands become increasingly global, attention to the equity that they

create and foster has grown.

The act of conducting a trademark search allows you to better understand the

challenges the mark will face, in effect, the ever-important ability to ‘‘look before

you leap.’’ Other reasons exist for conducting a tradem ark search (audits, policing,

litigation), but trademark search reports are primarily used at the clearance level.

From a simple cost perspective, the cost of conducting a search almost always out-

weighs the risks of not conducting a search. Of course, the level and scope of search-

ing must be weighed in consideration of the potential risk, but some level of

searching is always advised.

Trademark searching can act as a ‘‘good-faith’’ gesture in the event a conflict

does arise, an indication that you made the effort and that the consideration of po-

tentially confusing ly similar trademarks w as important in your decis ion. However,

proceeding with use after being made aware of a close reference could be used as a

basis for a claim of willful infringement. While there is no legal obligation to search

before using or filing a trademark in the United States (some jurisdictions outside the

United States such as Venezuela do require a search prior to filing), there is some

case law that indicates that the act of conducting (or not conducting) a search may

have an impact when the court assesses damages (International Star Class Yacht

Racing v. Tommy Hilfiger U.S.A., 2d Circuit, 1992), and in determining bad faith

(Sands Taylor & Woods v. Quaker Oats, 7th Circuit, 1992). Besides the legal and mon-

etary risk of not searching, the inherent value you wish to get from the trademark is

put at severe risk if you do not search. The act of conducting a search is absolutely in

the best interest of anyone launching a new trademark, and there should almost

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never be a consideration of whether to search or not, but more a decision of how

and where that search will be conducted.

In this chapter, we look to explore the overall search process and the balance of

objective ‘‘science’’ and subjective ‘‘art’’ that goes into every trademark search. This

chapter also explores the use of a professional trademark search firm, along with the

varying levels of searching that can be employed. A survey of available search types,

tools, and products also is discussed in context of brand clearance challenges.

The Trademark Search Process

The prospect of searching for ‘‘confusingly similar’’ trademarks is an inherently sub-

jectiveprocess.Inmostcases,atrademarksearchisusedtodeterminewhether

trademarks or brands already exist that may prove to be similar enough to the mark

youwanttousetocauseconfusioninthemarketplace. To search for trademarks

that may or may not elicit a mental response in the mind of a consumer requires a

unique organic process that evolves over time and can change from day to day,

based on the unique parameters of the name selected. The relationship of the trade-

mark and the user of that trademarked product or service can be thought of as a

mental contract. The mark and its owner define themselves through their brand—in

regard to origin, quality, and overall identification of the product or service they rep-

resent. In turn, the buyer or user must accept that definition and agree that those

attributes (origin, quality, and purpose) are associated with that mark. A trademark

search helps you to identify where that con tract may break down—where another

mark is already in use or whether trademarks exist that may confuse the consumer

and weaken or invalidate the implied mental contract. In most jurisdictions, it is not

only an exact match, but a similar one that can cause problems to a potential new

trademark. Similarly, in most jurisdictions, the channels of commerce where the

trademark or brand will intera ct with consumers are incred ibly important in deter-

mining whether that confusion may occur.

In an elemental sense, the heart of searching revolves around the interaction of

the trademark and the goods or services it will be associated with. The two may be

thought of as having an inverse relationship to each other. The closer a mark is to a

preexisting one, the further apart the areas of commerce may be and still cause

potential confusion. The further apart a mark is to an existing name, the closer the

areas of commerce must be before there is a likelihood of confusion. Two trade-

marked names that are somewhat close may be weighted differently in regard to risk

based on their areas of commerce. If you conduct a search for the term MOO to be

used on nondairy creamer, an existing trademark of MU for yogurt products may be

more important than MOO for software products or NOO for coffee. There is not

always a right answer.

Of course, other considerations come into play when weighing the relevance

and impact of marks found. The status of the potentially conflicting mark is obvi-

ously of large importance. Is it filed, registered, canceled, or abandoned with the

Patent and Trademark Office (PTO)? Is it actually in use, only used historically, or

filed to be used in the future? The ‘‘global footprint,’’ along with the potential fame

or marketing around a trademark can also play a role. Is the mark you’ve found used

204 Intellectual Property Operations and Implementation