Trademark Research and Trademark Clearance – A Primer

We previously discussed trademarks in general and how they are used by businesses to distinguish their brand of product or service.  In this post, we will discuss the trademark clearance process, and the trademark registration process with the US Patent and Trademark Office.

Trademark Clearance

Trademark clearance is the process of evaluating potential brand names against existing brand names or designs that are in use in commerce.  Trademark clearance is important for two main reasons.  First, it is of no use to a new brand to overlap with the brand name of another business that is already being used in commerce.  This will tend to lead to consumer confusion about who makes your product.  Second, if another business is already using a particular mark, you run the risk of nasty letters from that business’ attorney, and potentially a lawsuit for infringement and/or dilution of that mark.  If you have already committed substantial money to develop and market a particular brand name, then discover that your mark is already in use by another in the same market area, not only will you lose the money invested in your marketing, but you could be sued.

You should always talk with an attorney licensed in your state before making decisions about your brand or design mark.

Market Research

Generally, a person starting out in business should conduct some research on similar or competing businesses that are already established in the market place.  For example, if you wanted to start a new information technology company that virtualizes physical servers, you would want to find out if there are other businesses with that kind of technology.  VMWare and Microsoft are major players in this market.  You would then want to take a look at the brand names that these companies use to distinguish their software for virtualization.  For example, Microsoft uses a brand name, “Hyper-V” or “Hyper-V Server” for this product offering.  VMWare uses a number of individual brand names for its suite of products.  You will note, however, that each one of these names begins with a lower case “v.”  This business also uses “VMWare” itself as a brand name when you peruse their marketing materials.

From this preliminary research, you would likely rule out a product name that included “Hyper-V” or “VM” or “VMWare” in your name.  You will also note that a lot of the literature on virtualization uses the marketing concept of “cloud” or “cloud computing.”  It is possible that there are companies that develop virtualization software that include the word “cloud” or “cloud computing” in their brand name.  For example, a google search for “cloud computing” turns up a paid ad for Oracle, HP, and a link to IBM’s web site.  So, “cloud” may also not make sense to be a part of your software’s brand name or identity.  You might also rule out starting out your product branding with the lower case letter “v,” as VMWare may enjoy “family of marks” protection.

Knowing what’s in use in the market can help you start thinking about how to describe your product, and how you want to distinguish your software from the existing companies that make this kind of software.  Understanding the words that are commonly used by customers or businesses that offer similar services to your new business will help you to get into the mindset for branding your company’s product or service.

Potential Brand Names

From here, you would want to work on developing a list of potential brand names for your product.  As you may be aware, the law recognizes varying degrees of protection for marks on a sliding scale.  Brands or marks that are merely descriptive of a product or service generally cannot be registered, except under specific circumstances (that the brand has been used in commerce for long enough to develop a secondary meaning).  Also, marks that are generic, which is, that tend to represent a category of goods (think “Thermos” which about 100 years ago was a trademark that became so effective that everyone called their hot drink carrier a thermos) cannot be registered.  These two groupings of marks will generally condemn the mark to little or no protection should another start using that mark with his or her goods.  (For a general discussion of trademark protection, take a look at the case of Abercrombie & Fitch v. Hunting World, Inc., 537 F.2d 4 (1976)).

However, a mark that is “suggestive” or is “arbitrary and fanciful,” which is a fancy way of saying that the mark is distinctive, will receive more protection from infringers.  For example, “Coke” or “Coca-Cola” are trademarks for a very well known brand of soft drink.  The word “coke” literally means a fuel that is derived from coal.  I doubt that one would say that this word would, in a literal way, have much of anything to do with a carbonated soft drink, but you could see why this might be suggestive – the caffeine in this soft drink powers many a late night programmer (along with pizza) to hack out some code for a morning deadline!

Clearance

Coming up with a list of potential names is a challenge for many businesses.  However, after you get the creative juices flowing and have a list, the next step is to work with a Trademark attorney to review your list to help narrow the field.  An attorney can help you to identify “generic” or merely descriptive proposed marks that are unlikely to be accepted for registration.  In addition, an attorney can perform a preliminary search to see if there are existing marks already registered that are the same or very similar to a proposed mark.  These steps will reduce your list of potential marks.

After this hurdle, you can identify what potential marks you want to pursue.  If appropriate, an attorney can order a more comprehensive search from a trademark search business to identify, more broadly, those marks already in use in commerce that may overlap with the proposed mark.  The attorney can then help you understand your chances at a successful registration of a proposed mark.

 

Note: Marks mentioned in this article are the property of their respective owners.  Use of these marks is not meant to imply endorsement of this article.

Published by

faithatlaw

Maryland technology attorney and college professor.

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