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Davis Brown Intellectual Property Law Blog 


Trademark Searching - Remember to Think Outside the Box - August 12, 2015

Trademark searches are necessary, any trademark attorney will tell you this. Like we have said previously, adopting a trademark and putting it into the marketplace without conducting some type of trademark search is akin to walking through a minefield blindfolded. It’s just not a good idea.

 

However, throwing your trademark into Google and searching may not be enough to clear the trademark for use. Even if you are savvy and go to the United States Patent and Trademark Office (USPTO) to conduct a search, this may not be enough either. Remember, if you conduct a “basic search” at the USPTO, you will only find identical trademarks. However, the test for trademark infringement is not identical, but whether or not two marks are “confusingly similar.”

 

When you conduct a trademark search, remember the following tips:

 

1) Think outside the box. If you are a craft brewery, don’t just look for beer and brewery names that may be like yours. Look at restaurants—especially those who brew their own beer—wineries, and even stores that sell alcohol. Brewpubs, wineries and breweries are considered “related” for purposes of determining whether two marks are “confusingly similar.” If the new name you picked out for your new brew is also the same name as a wine, you may be infringing on that trademark. Take for example, the following two scenarios:

 Wine glass and beer stein by morguefile user Darnok

MILLBROOK DISTILLERY for whiskey was found confusingly similar to MILLBROOK for wine. Opinion here; and

 

COCOMO for tequila and tequila based prepared cocktails was found confusingly similar to KOKOMO for wine. Opinion here.

 

2) Look for websites that offer the same or similar goods. For the craft brewer, websites such as Untappd, Pintley, RateBeer and Beeradvocate are your best friends when it comes to trademark searching. If there are similar websites or applications for your particular industry, use these as starting places for your trademark searches.

 

3) Always remember a clearance search will not provide you definitive results. Just because your internet searching doesn’t appear to turn up anything problematic, there is certainly no guarantee that someone else out there is not already using the name. Trademark rights are based on use. The first person to use the trademark typically will have more senior rights in their geographic territory than a junior user of a confusingly similar mark.

 

Even if you have a trademark attorney conduct a search for you, there are never any guarantees about your absolute right to use the mark. A trademark search is a risk assessment; what is the risk of running into problems by adopting a certain name.

 

However, conducting a risk assessment is preferable to walking into the marketplace blind. So if you are conducting your clearance searches on your own, these tips should help pave the way for you to conduct proper due diligence and make an informed decision about adopting your mark!


 

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