The Dual Role of Trademarks
Trademarks serve a dual role in the marketplace:
- Distinguishing your products or services from those of your competitors; and
- Protecting consumers from being confused or deceived about the origin of the good and services they purchase.
The first is important to you as a business owner because your goal is to build a recognizable brand that your potential customers will associate with high-quality goods or services. The second is important for the people purchasing those goods and services to know they’re actually getting what they expect.
How Trademarks Protect Consumers ("Likelihood of Confusion" Test)
Let’s say that you’re shopping for a new laptop online. You see that you can purchase a new 13” Apple MacBook Pro for $1699 through Amazon:
Let’s say that you also notice a listing for a 13” “Mack-book Pro” that looks almost identical for $1099. A savvy buyer would likely notice the spelling discrepancy right away (and know that Apple having that big of a sale is too good to be true), but there’s a good chance that a certain number of people would purchase the cheaper laptop thinking they were buying a genuine Apple product.
This illustrates the second dual purpose of trademarks – protecting the public from being confused or deceived about the origin of the goods or services they purchase. One key factor in analyzing whether a trademark application can be successfully registered is whether allowing your application to proceed to registration will create a “likelihood of confusion” with a trademark or service mark that has previously been registered. In the example above, an application for “Mackbook Pro” would certainly be denied due to Apple’s existing trademark for “Macbook Pro” and the likelihood that people could think products sold by “Mackbook” were actually created by Apple.Avoiding A "Likelihood of Confusion" Rejection With A Clearance Search
The best way to avoid having your application rejected by the USPTO due to this “likelihood of confusion” test is to conduct a thorough search to see if anyone else out there is already using a similar mark for their business. The USPTO website offers a good starting point, which is the Trademark Electronic Search System (TESS). TESS is a searchable database of every U.S. trademark that has been registered or applied for. The TESS system can be accessed by going to www.uspto.gov, hovering over the “Trademarks” tab and clicking on “Searching trademarks”:
On the following screen, scroll down and click on the "Search Trademarks" box:
this will take you to the TESS home screen that looks like this:
The USPTO website has videos that explain the basics of conducting a search using the system. At a minimum, a trademark applicant (or their attorney) should use this system to search for exact matches and common variations of the name or design the applicant is trying to register.
For the best chance of uncovering problematic pre-existing marks, a comprehensive search would include reviewing federal and state trademark registrations, government databases, business and trade periodicals, and internet searches to uncover third parties who have not registered their trademarks, but may still have common law rights within certain geographical areas. However, not even the most comprehensive search is guaranteed to uncover all possible conflicting marks and practicality and cost are also important considerations.
How Comprehensive Does A Search Need To Be?
As a general rule, the more you’re planning to invest upfront in developing and promoting your brand, the more comprehensive your search should be. It may not make sense economically for a freelance web designer testing the waters of a new side business to pour thousands of dollars into a search. Likewise, a business owner who anticipates pivoting several times and changing names or designs, may not want to make a substantial investment into protecting marks that they ultimately may not stick with in the long run. On the other hand, a tech startup investing millions of dollars into designing and marketing new software will want to take all possible precautions and conduct an extensive search.
When To Seek Professional Help
Determining what to search for and interpreting the results can quickly become a complicated process. If you’re unsure whether an initial search is sufficient or having trouble understanding the possible risks posed by existing registered trademarks (or unregistered trademarks discovered during an internet search), an experienced trademark attorney can help you evaluate your situation and suggest the proper scope of a search and the best strategies to pursue.
To preserve resources, it’s best to start with a quick “knockout” search of the federal registrations and some targeted online searches to identify whether there are any obvious conflicts before investing in a more significant undertaking.