In last week’s article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy. This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy. The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark. That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark, and pay damages for your infringing use of the mark. This development could blow a station’s marketing budget in the blink of an eye. Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark. So, what steps can you take to stay out of legal hot water?
There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement. As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark. This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark. Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark. In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search. Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark. What does this entail, exactly?
Some searches are simple and can be done by your marketing or operations team – simply log onto the USPTO’s database (called “TESS”) and plug in the proposed mark. This type of search will help you quickly identify any obvious impediments. If a similar or identical mark pops up for the same or similar services, then the sleuthing is over – your proposed mark has been “knocked out” by the registered mark and you must move on to your next mark.
However, the analysis of these searches can get complicated very quickly. What if one or more similar marks are registered for similar services? What if an identical mark is registered, but for somewhat different services? What if the search identifies a mark that differs from your proposed mark by a single word or has the same words in a different order? What if there is a registered mark for the identical services, but an Internet search locates no use of the mark? What if the mark is federally registered, but an Internet search indicates that the mark is only being used in a limited geographic market that is not near your area of proposed use? An experienced trademark lawyer who is familiar with interpreting these results may be needed.
Moreover, even if your proposed mark is “clear” at the federal level, your sleuthing is not yet over. In the US (unlike most other countries), someone who is using a trademark or service mark, but has not registered it, has what are called “common law rights” in the mark. Those rights are limited to the geographic area in which the mark is used and the services are provided. The prior user of an unregistered mark that is similar to yours could preclude you from using your mark in its market, even if you federally register your mark.
As you can see, the simple act of “clearing” a trademark is rarely simple. Many trademark-savvy companies will run a quick preliminary search in-house, but if a mark is not clearly “knocked out,” will turn to counsel to run what is called a “comprehensive search.” These searches, while not totally foolproof, identify similar or identical marks at the federal, state, and common law levels, and can also search business names, domain names and in some cases, marks registered internationally that could lead to a claim of trademark rights in the US. Practiced trademark attorneys vet hundreds of marks per year and can help you assess the level of risk associated with the adoption of a proposed mark by analyzing these search results. They may also identify reputational risks that you may not have considered, e.g., if your proposed mark is being used by an adult-themed website, is slang for something you weren’t aware of (for example, the former SciFi Channel’s “text-friendly” rebranded name “Syfy” also turned out to be slang for syphilis) or otherwise has negative connotations you hadn’t considered. If, however, your mark “clears” a comprehensive search, you can feel fairly confident that you have picked a mark that presents a low risk. Often clients have “fallen in love” with a mark that has some level of risk associated with it, but, if a search is conducted, at least that risk is assumed with eyes wide open and can be factored into the company’s business strategy and legal budget.
The costs of conducting trademark searches are relatively low when compared to both the reputational and the monetary costs associated with rebranding or otherwise defending an infringement claim. So don your best detective hat and get sleuthing! In next week’s Trademark Tuesday installment, we will discuss the benefits of federally registering your marks, and how to go about doing so. There is much more to it that meets the eye! And, of course, keep an eye out for details on the webinar we will be holding at the conclusion of our five-part series.