The Dangers of DIY Searches
A good trademark search means you at least know what might come out to bite you. A lot of DIY searches fail to find the marks that can cause problems for their owners in the future.
Back when I reviewed trademark applications at the USPTO, I would often hear from applicants that they didn’t understand why they were getting a refusal. They would tell me that they searched for their marks before filing and that nothing came up, so it was very frustrating for them now – several months and hundreds of dollars later – to learn that their mark had already been applied-for or registered by someone else.
If it’s such a common problem, how does it happen?
There are several ways that a DIY search can fail to uncover problematic marks. Here are a few questions to consider.
1. Do you know how to find marks that aren’t identical to your mark?
People applying for trademarks sometimes use the USPTO’s TESS search tool to search for their marks, but they usually do not understand how it works or what its limitations are. TESS is not Google. If you search for wording that is a near-miss for a registered mark, TESS is not going to ask “Did you mean . . .?” TESS is going to search what you tell it to. Nothing more. Nothing less. As a fun experiment, type “DIZNEY[bi,ti] and live[ld]” into TESS and see how many hits you get. As of today, the answer is zero. Anyone wanting to register DIZNEY with stuffed toys would definitely need to know about the many, many DISNEY marks already registered for use with those goods. But that simple TESS search would leave them clueless.
You need to be able to find words that are similar in appearance to the words in your mark, but that have slightly different spellings. You also need to be able to find words that are spelled very differently but that sound the same. You also need to be able to find marks that have the same “overall commercial impression” as your mark – meaning that both marks put the same overall image or concept into your head. The classic example is BLUE NUN v. BLUE CHAPEL. In a now-famous decision, these marks were found to be too similar. If you were applying for the mark BLUE NUN, even if you knew how to find slightly different spellings of BLUE and NUN or words that looked different but sounded the same, would you know how to find a mark like BLUE CHAPEL? Would you know how to do that efficiently?
If there are multiple words in your mark, do you know how to search them in combination? Do you know which ones you need to search for individually as well? If your mark is a design mark, do you know all of the six-digit codes to search for each design element in that mark? Do you know how to search those in combination? Do you know which ones you need to search for individually as well?
2. If your search turned up a confusingly similar mark, would you recognize it?
When you’re comparing two marks, not all parts of those marks are weighed equally in the comparison. Do you know which parts are weighed more heavily - which parts are the dominant parts of a mark? If not, your search might turn up a registered mark that is likely to block your path to registration, but you might not recognize that as a confusingly similar mark. You might see wording in that mark that doesn’t appear in yours or vice versa and think that makes the marks different enough that you’re in the clear. But if the shared wording is the dominant part of the mark, and if the unshared wording is weighed less heavily in the analysis (for example, because it is descriptive of or generic for the goods or services that you offer under your mark), then you’re at risk.
3. Do you know which goods or services are related to yours?
Comparing the two marks is an important part of the search process, but it isn’t the ONLY part. You also need to consider how closely related (or not) your goods/services are to those in the registrations you’re looking at. The goods or services don’t have to be identical to cause a problem for you. They don’t even have to be in the same Class. They just have to be related in some way that would make it likely consumers would be confused about them coming from the same source. If you used your mark with coffee, and your search turned up a registration for that mark used with beer, would you think you were safe? The USPTO commonly refuses applications under circumstances like this. If you used your mark with dietary supplements, and your search turned up a registration for that mark used with body moisturizer, would you be worried? Again, the USPTO commonly refuses applications under circumstances like this.
There are other factors to consider. The closer the marks are, the less closely related the goods or services need to be for a refusal to issue. Do you have a sense of how that sliding scale works? Additionally, the relatedness of goods or services is not static. Instead, it changes over time parallel to the changes in the real-world marketplace. Even if you can find examples of pairs of companies that have registrations for similar or even identical marks used with goods that correspond to yours and to the goods in the registration you’re worried about – that doesn’t mean you’ll necessarily be able to get your mark through to registration. It may be that marketplace realities were different 10 or 20 years ago when those registrations were granted – maybe those goods or services weren’t related then. That doesn’t stop them from being related now. Would you have thought two years ago that some of your favorite clothing stores would also start selling personal protective equipment under the same mark? Probably not. But now many of them do. The market changes, and the relatedness of goods/services changes with it.
4. Do you know how to perform dilution analysis?
If you find a mark that seems confusingly similar to yours, and it’s being used with goods or services that seem to be related to yours, do you know when it’s the end of the road versus an obstacle you can get around with some careful maneuvering? There are many ways that you might try to get around (or preemptively avoid) a refusal based on a likelihood of confusion. One of them is called dilution. When you argue dilution, you’re basically saying that the field is crowded: there are so many other marks in that same field of use that include the shared wording that this is no longer causing consumers to be confused about the source of the goods or services. Do you know how many marks is enough? Do you know which registrations you might point to and which ones are not going to be helpful because they’re used with goods or services too distant from yours?
Bottom line: searching for marks and actually understanding the results of your search is one of the most complex parts of trademark law. I fully understand the impulse when people want to save money and do their own searches. But be smart about the corners you cut. The whole point of a thorough search is to find out what obstacles are in your path to registration. If you do your own search and save money upfront but find out months (and hundreds of dollars) after filing your application that your mark can’t be registered, that’s a net loss.
This information was posted on March 9, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.