You can get sued if you infringe upon someone else’s trademark. Don’t think this is likely to happen? Well, we have made a lot of money for over 35 years because this happens all the time. We are constantly getting contacted by folks who thought they could use their name only to discover (sometimes years after they started using it) that they now have to change it. All that money spent building their brand down the toilet! This is a really big deal today, especially with all of the AI name generators and new breed of naming consultants who downplay the importance of trademark registration. So, unless you love to gamble, keep reading.
What is the purpose of a Trademark?
Before we dive into trademark screening and trademark registration, let’s clear up what trademarks are and why they matter.
A trademark can be a unique phrase, word, or symbol that represents the source of particular goods and services. That is, a trademark is often your brand name and if you use it properly, it will protect your brand. If a company uses the registered trademark symbol (the circle R and not just the “TM” symbol) after their name or logo, it should mean they successfully registered their mark with the United States Patent & Trademark Office or an international approved trademark office. Essentially, trademark rights are protected by law.
If you want to complete a trademark application for your own business you should first ensure that your new mark is different enough from existing marks in your category (note that you can sometimes register the same exact name as someone else’s as long as it for something totally different – like Dove chocolate and Dove soap). If your proposed trademark is too similar to an existing mark for the same type of company, product or service, it will be rejected by the patent and trademark office. The legal aim here is to ensure that new marks aren’t confused with marks that have already been in use under a similar name in the same market for the same products or services..
The more distinct your name, the more likely it is to be accepted and legally protectable.
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Even if you’re lucky enough to come up with a name you love that doesn’t pop up when you do a web search, it doesn’t mean you’re in the clear when it comes to trademark law. Danger lurks just below the surface. A Google search is simply not enough!
You are NOT okay moving forward with a name just because:
You searched on the web and didn’t see a match.
You can register your name with the local county or secretary of state as your DBA (Doing Business As name).
You can buy the dot-com.
You went to the USPTO.GOV website and did a TM screening, not finding any exact matches.
These situations above feel great, but provide a false sense of security. It’s crucial to look below the surface.
Trademark danger lurks below the water line and could easily sink you. Why?
Registering your name with the county or state doesn’t mean you can safely use it.
Purchasing a dot-com does not give you TM rights in the name.
Searching for an exact match isn’t enough- TM law is based on likelihood of confusion, not exact spelling matches.
There could be alternate spellings or merely similar-sounding names that could disqualify your claim. If you press on without knowing these potential conflicts, you risk wasting money and time.
You could have registered your name with your state, secured your dot-com, used it for a while and STILL be forced to change your name. This is why we recommend proper trademark screening.
What Is Trademark Screening?
Preliminary trademark screening is a critical step when finding the right name for your company. It will check whether a similar mark exists for names that you are interested in.
Also referred to as ‘prescreening’ or knockout search, this DOES NOT guarantee that you end up in the market with a name that is available. Rather, it is simply the first step to start to identify potential problems. The main reason for a preliminary trademark screening search is to eliminate names that aren’t available due to existing trademarks and to avoid potential trademark conflicts, not to secure a definite “green light” on your new name.
It’s worth noting that this preliminary screening isn’t the same as a full clearance search. While preliminary trademark screening is often a strong starting point, that’s all it is.
A full clearance search will include a far deeper and more extensive evaluation of unregistered or common law uses and registered trademarks. This search is often performed by an attorney and not just any attorney, but one who specializes in Intellectual Property Law (an IP attorney).
Proper Trademark screening usually includes:
Searching for phonetic similarities (not just identical sound-alikes).
Searching not just for federal TMs but also for state TMs and common law usage (unregistered TMs already in use).
Searching in other countries where you may want to sell your products and services.
Searching for foreign words that are registered as trademarks and mean the same thing as the English name you want to use.
Searching for both active and inactive, registered as well as pending or canceled trademarks- status is important!
Checking across multiple classes of good and services (there are dozens of these!) for each class that applies to you.
As you might expect, this process is more time-consuming but will provide peace of mind that your new trademark is likely available.
The truth is that the names that kindle the most initial enthusiasm are often the ones with treacherous trademark issues lurking behind them. The reason? If there’s an incredible but somewhat obvious name choice, it’s likely someone has already snapped it up. Our clients often come to us having fallen in love with the names with the highest risk because those are the most obvious names and often, the most popular (and overused) too.
Why Do You Need To Check Your Trademark?
There are a couple of additional reasons why you should arrange for a preliminary trademark screening, like wanting to reduce the chances:
That the trademark office rejects your application. If this does happen, then you’ve wasted time and money having gone through your trademark registration process.
That your name is already in use or too similar to an existing mark for similar goods and services, resulting in you receiving a “cease and desist” letter. Believe it or not, receiving a letter like this immediately is not the worst case scenario. It’s more problematic when existing brands or companies pop up years later, demanding you stop using a name after your business is in full swing.
Trademark law is complicated. It’s not just as simple as avoiding the same name as another mark. There are countless examples of businesses in the market that use virtually identical names. An example of this is Dove chocolate and Dove soap. The reason they can do this is that the brands are in two completely different markets. But there are exceptions to this too. For example, you couldn’t brand your new video game Coca-Cola even though Coca-Cola doesn’t sell video games, because Coca-Cola is what is considered a famous mark.
Do You Need To Hire A Trademark Attorney For This Process?
At this stage, you might think that your best option to avoid a legal nightmare would be to hire a trademark attorney for a little help and guidance. Couldn’t they help ensure that your mark isn’t too similar and guarantee a successful registration? This is a great idea if you have the time and budget, but…
The problem is that a full search on a name takes a couple of days to a couple of weeks and those lawyers often charge by the hour. A full search on a single name, just in the U.S., with a review by an attorney might cost around $1,000. This isn’t something that you may want to add to your budget, especially if you’re considering a handful of name candidates. The good news is that you don’t need a lawyer to screen a name or multiple names. You need a trademark research consultant. Professional consultants can provide an expert (although not necessarily a legal) opinion and a pretty comprehensive report with their findings including whether your trademark is too close to an existing mark. They’ll often complete this search for a fraction of the cost that a lawyer would charge, still helping you reduce the chances that you end up in a dispute with another trademark owner.
However, before you pick your final name, we strongly recommend you do contact a trademark attorney to review all of the legal research you’ve already done. They will also likely want to do some additional searching and help you prepare and file your trademark application.
The Differences Between A Trademark And Domain Name
It’s easy to get trademarks and domains confused. One of the most common misconceptions is that the two are always closely linked. It’s important to note that registering a trademark does not provide you with rights to domain names. Similarly, owning a domain name doesn’t provide you with the legal trademark. Obtaining a domain or a unique website name is a completely different process. Although, searching for domain names with an identical and similar use is a smart preliminary step as part of trademark research.
How Our Extensive Trademark Screening Works
Thankfully, we don’t do a glitchy quick search and call it a day. Instead, we perform more complete screenings (but still not a full search) for you and use a variety of screening tools. We have a dedicated team for name research, who use the same tools and services that trademark attorneys use. In addition to federal trademark checks, we perform state checks, common law usage checks, and web screenings. We also have the ability to search global trademarks in almost all countries if necessary.
This is the kind of nitty-gritty stuff that we deal with every day because we understand that the screening process needs to focus on more than just perceived availability. There are nuances and subtleties to trademark law and common usage law that only experience can prepare you to catch. And we do our trademark screening as part of our standard business naming service — which means you incur no extra fees to attain that desired peace of mind.
Indeed, we understand that this screening process is an absolutely vital element of naming your company, product or service. Let us take care of this process for you so that you have a high likelihood that your perfect name is legally protectable.
Why You Should Let Us Solve Your Company Naming Conundrum
Our decades of experience have sharpened our skills and made us pretty savvy name screeners. But we don’t rely too heavily on past experience — we stay abreast of the shifting trends so that your name is relevant in today’s rapidly changing culture. You can feel confident that the names we pitch to you have cleared our preliminary screenings — reducing the chances that your legal will reject the name because it’s too high risk for your company, brand, product, or service. We can screen the market for identical and similar goods as well as similar marks.
We use the most advanced screening tools to ensure that you are not at risk of being too close to marks used by other companies in your space. This allows you to save time while we deliver results that you can have confidence in. We can even search for similar trademarks in other countries to ensure that you can secure IP rights overseas.
As well as ensuring that you mitigate levels of trademark risk, we can help in other areas too. This includes completing the right description of goods and services for your proposed brand and determining the right trademark classes for your proposed trademark registration.
Our proprietary naming process also includes linguistic screening to ensure that your name is suitable for international classes and usage, and that there are no other similar names that could cause issues in the future.
Our naming process can result in a great choice between multiple relevant names. We recommend you still speak with a trademark attorney for a legal opinion, but why not dodge the cost of an expensive legal service initially while still gaining the quality solution you need to protect the future of your brand?
At NameStormers, we do just that: all of the monotonous naming legal prescreening in addition to bottomless brainstorming creativity. We also work with many of the top IP attorneys in the country and certainly can recommend one for you to use, at the appropriate point in the naming process.
To top it off, we work for a flat fee, which means we repeat the screening process as many times as it takes until you have some viable name candidates. We can even screen additional names that your agency, your team, or others come up with for your company, if you would like. That’s why we’re here! We deliver a cost-effective solution and put your needs first.
If you are interested in learning more about how our trademark screening solutions can protect the future of your brand and ensure a successful naming process and trademark registration, please do not hesitate to contact us today. An experienced, senior member of our team will be happy to assist you further.
