One of the more sympathetic (and frustrating) things I see as a trademark lawyer is when a new startup or small business “kind of, sort of looks into” their brand name before launching, only to find out at the eleventh hour that someone else is already using it. Very often I get these panicked calls a day or two before the first press release, trade show, or website launch while everyone is scrambling for a quick compromise for what is possibly the most important factor in business — brand.
Although it is true that larger companies often have the budget and infrastructure to do costly, time consuming brand searches, startups and small businesses simply need more efficiency, particularly when there are so many moving parts before a launch.
The reality is that startups and small companies don’t have to be at a disadvantage in securing a brand if they make a point early in the process to do two simple things:
Choose a trademark that everyone likes; and
Determine if you can use it.
Sounds simply, right? In a way, it is, if you can avoid some of the pitfalls of choosing the wrong name. Knowing early on whether a trademark is available for use saves time and money when you most need it. Let’s quickly look at what “available” means:
Registering a Business Name: When filing a business entity name with the relevant state agency, you can pretty much file any name you want provided another business hasn’t filed the exact same name. You could file the name CALVIN KLEIN, LLC, and if there is no state business name filing for those words, then you can file it. You likely couldn’t use it in any way without bringing on a rainstorm of legal action from the fashion and design empire of CALVIN KLEIN, but theoretically, you could file it. Scanning state agencies for prior use is helpful just to see what is out there, but it doesn’t answer the question of whether you can use it as a trademark.
Registering a Domain Name: Like a business filing, website registrars only look to see if a requested domain is already being used. Website domains are like phone numbers. Thus, you might be able to register www.calvinklein.com if indeed Calvin Klein itself or no other third party had already registered it. Again, Calvin Klein will be gunning for you if you do this but, theoretically, you can register it and have contractual rights to your domain name registration (but not necessarily trademark rights in the content of the domain).
Registering a Trademark: Unlike filing for business names and website domains, trademarks refer to the goodwill and reputation associated with the business itself, not just its existence or contact information. Trademark law protects the consumer from mistaking one business’ goods and services from another. It guarantees a certain quality from an identifiable source. Trademark rights arise under both state law and federal statutory law and provide an intellectual property right to the trademark holder. Therefore, filing for a trademark with the U.S. Patent and Trademark Office requires not only that the mark be available, but that no other confusingly similar mark is being used for similar goods and services.
To use our CALVIN KLEIN example again, when you file a trademark application for “CALVIN KLEIN” for, let’s say, rug sales, the USPTO does a search of every registration and application incorporating not only the words “Calvin” and “Klein” but also any confusingly similar variations of those words, such as “KALVIN KLEIN,” “CALVEEN KLINE,” “CALVIN KLOON,” and the like, for similar goods and services. Please remember: trademarks do not need to be identical to be conflicting. I can’t tell you how many clients have assured me that their marks will not be infringing because they want to use “DISNEE” instead of “DISNEY”. Trademarks will conflict if they give the same overall commercial impression in the mind of the average consumer being targeted. That means, you could spell your name “DISNEE,” “DEESNEY,” or “TISNEY” and your mark will likely infringe Disney’s rights. Note the spelling of the third example: TISNEY. It doesn’t really look like the word “DISNEY”, but when you say it out loud, it sounds confusingly similar, which is why it’s important to remember that an overall commercial impression is just that: the general impression that the mark evokes through sight, sound, smell, and even a general “look and feel” in the mind of the consumer. When you want to capture the essence of the DISNEY mark for your own use, you are effectively trading off the goodwill of someone else’s reputation and some trademark owners, particularly famous ones, are notoriously aggressive about enforcement of their rights. This rule of thumb is a very common sense analysis: If you’re drawn to a mark because it looks like someone else’s mark, you probably shouldn’t use it.
So where do you start in the search and clearance process of a trademark? Many larger institutional businesses take an exhaustive approach, using both inside and outside legal counsel from the very start, weeks or months of clearance searches, opinion letters, and many meetings before making a final decision. Often this makes sense when adding a newly branded product to a well-established line of goods where the initial investment in the product is so significant that nothing less than a full blown, worldwide search can provide comfort that the mark is clear to use in all contexts. For most startups and small businesses, however, this approach just doesn’t work when efficiency and budget are key to a successful launch. Startups need to know now whether their proposed brand will work and don’t have days or weeks to spare figuring it out, particularly if the answer is disappointing.
Instead, I’m a big fan of scheduling a couple of minimally-coordinated meetings to avoid the last minute scramble of change or modify the brand that everyone’s been excited about for months. First, decide collectively what brand you want your business to evoke. Ideally, you want to have had five or six viable options to start and the more the better (see Choosing a Trademark: Make it Distinctive for guidance). Once you’ve chosen some contenders, run a quick “knockout” search in two places: www.uspto.gov and Google. The USPTO offers a search database called TESS, which allows you to search by trademark or owner’s name (it offers very explicit instructions about how to serach). And Google, is, well, Google. What you are looking for are obvious, dead-on hits for prior use of the name you want either filed or registered with the USPTO or in use already by someone who is referenced online. For efficiency at this stage, if an identical or near-identical conflict is out there for the same mark in any field similar to your proposed field of use, move onto the next proposed trademark option. This first step simply is a search for a clear and obvious conflict.
When running your knockout search, you might be tempted to say, “Well, it’s really not exactly the same,” especially with a trademark you really want to use. Here are a few red flags that will help you know what to cross off the list before you put too much time into it:
Plurals, alternative spellings, and stylization does not prevent conflict;
Any foreign language equivalent of a mark will still be conflicting;
If the mark you come across is particularly well known or famous – move on; and
If the potentially conflicting mark is in a field that you might go into in the future under your proposed brand, then move on (don’t limit yourself this early in the process).
After you’ve narrowed down a few potential trademarks that don’t have identical or near identical hits, then then process requires a bit more thoughtful decision-making. Before you register multiple domains, file business names, planned brand launches, and write press releases, you want to know you’ve truly cleared the decks of prior users for the mark you want. Here is where a trademark search company tool can be extremely helpful. There are several very efficient and cost effective trademark search companies with advanced algorithms that can weed through the white noise and produce search results in seconds instead of days. These trademark search databases are very thorough and can pick up potential problem brands not as obvious in the more surface “knockout” search. However, the initial “knockout” search is still a great preparation tool because many of these search databases charge their fees per mark, so you can keep your cost down by weeding out the obviously conflicting marks first. The priority is to keep this analysis efficient, yet thorough, and in real time to keep pace with a busy start-up schedule. Once you have “cleared” your trademark for use, you can charge forward with your branding plans.