Guest contributor: Monica Mason, Trenam Law
A trademark is a name, word or logo used to indicate the source of a product or service. While a “trademark” technically refers to a brand used on goods and products (e.g., coffee, sneakers, jewelry), a “service mark” refers to a brand used in connection with services (e.g., restaurant services, insurance services, accounting services). Almost every company imaginable has a trademark or service mark – either the name of the company advertised to the public or the name of its product.
Prior to using or advertising a new brand in connection with a business or product, it is critical to have a trademark attorney conduct thorough trademark searches to clear the potential trademark for use and registration. It is necessary for a business owner to know whether there are risks to the company’s use and registration of the proposed trademark. When first selecting a trademark, a business owner should conduct an Internet search or use the free search engine located on the United States Patent and Trademark Office website – Trademark Electronic Search System (TESS) – to discern whether the proposed mark is unique or widely used.
Generally, there are two levels of trademark searches recommended: first, a preliminary “knock-out” search is conducted to determine if an identical mark has already been applied for or registered with the United States Patent and Trademark Office or with any state trademark office. This first and very important step helps determine the potential availability and registrability of a proposed trademark, and can easily determine whether a proposed mark is worth pursuing or should be eliminated from consideration due to conflicting marks. The preliminary search, however, is limited in scope as many companies do not register their trademarks; thus, there could be additional and extensive use of the same or similar marks at common law.
If no conflicts are found in the preliminary search, the next step is to conduct a more thorough, due diligence trademark search. A comprehensive trademark search helps determine any further risks associated with the use and registration of the mark, including possible infringement risks, and reviews the extent of non-registered use of the mark around the country. This second level of searching involves a trademark attorney ordering and analyzing a detailed report from a specialized commercial search firm. The comprehensive search gathers information from a variety of sources including federal trademark/service mark applications and registrations in the United States Patent and Trademark Office, available state registrations, and also searches an extensive database of trade names, trade directories, corporate filings, international filings, registered domain names, Internet usage, telephone books, and other non-registration sources. These searches can also search design and logo components, phonetic equivalents, and other variations of a proposed trademark. Although a comprehensive trademark search offers a more thorough discovery of potential conflicts and risks involved with the use and registration of the potential trademark, it is not exhaustive.
Once the trademark has been cleared, a trademark owner should protect its trademark by filing an application to register the mark with the United States Patent and Trademark Office, with state trademark offices (e.g., Florida), and/or foreign countries, as appropriate.
Although U.S. trademark law does not require that trademark searches be conducted prior to using and/or applying to register a trademark, trademark searches are important because courts have held that the failure to conduct a trademark search prior to adopting a mark can constitute evidence of bad faith and/or willful infringement. Conducting a thorough trademark search and using a trademark attorney can help negate a charge of bad faith in a trademark infringement lawsuit.
While conducting trademark searches is not mandatory under trademark law, the searches can uncover substantial risks of which a business owner would otherwise be unaware, and save the company substantial expense, time, and headaches down the road.
Monica Mason is Senior Counsel at Trenam Law, one of Tampa Bay’s largest law firms. Monica practices in the firm’s Business Transaction Practice Group, focusing primarily on intellectual property law including trademarks, copyrights and domain names. Monica has vast experience with all aspects of trademark law, including trademark clearance and prosecution, cease and desist matters, and licensing. She represents clients in connection with sales and acquisition of trademarks, unfair competition, brand strategy, trademark watching and policing, and managing large trademark portfolios. She also assists clients in connection with copyright and domain name matters. Monica was recognized as the Tampa Trademark Law Lawyer of the Year in 2014 by The Best Lawyers in America.®