Assessing the Availability of a Mark: A Detailed Approach
When creating and protecting your brand, ensuring that your new mark is available, protectable, and registrable is critical. In the U.S., trademark rights originate from the commercial use of a mark. Owners of trademarks have the right to preclude others from using or registering marks that could confuse consumers or dilute their brands. Here’s a detailed look at how to effectively assess the availability of a mark and why this process is crucial for any business.
Understanding Trademark Rights and Risks
Commercial Use and Scope of Protection: U.S. trademark rights originate from commercial use, allowing the owner to prevent others from using marks that would confuse. Famous marks are also protected from dilution, where a new mark lessens the distinctiveness or tarnishes the reputation of an established, recognizable mark.
Search and Identification: Before adopting a new mark (a "candidate mark"), trademark searches help identify other marks that the candidate might infringe or dilute. This involves an in-depth examination of relevant databases, online resources, and existing legal filings to identify similar marks posing an unacceptable risk.
Risks to Identify:
Opposition or Litigation: The owner of an existing mark may oppose the registration of your candidate mark before the Trademark Trial and Appeal Board (TTAB) or file an infringement or dilution claim in federal court. These legal challenges can be costly, even when the claims are defensible.
USPTO Refusal: During examination, the USPTO trademark examiner may cite an existing mark as grounds for refusal if it conflicts with your candidate mark.
Domain and App Name Unavailability: In today’s digital world, a domain name or app name containing the candidate mark could be unavailable if another business has secured similar rights.
Protectability and Registrability of a Mark
After identifying potential conflicts, assessing a mark’s protectability and registrability is the next step. The USPTO's Principal Register provides the highest level of protection, but some designations cannot be registered here:
Unregistrable Subject Matter:
Generic Terms: Generic terms, which describe an entire class of products or services, cannot function as exclusive identifiers and will face automatic rejection.
Deceptive Designations: Deceptive marks are those that mislead consumers, either through false descriptions or by falsely associating with certain geographical regions.
Confusingly Similar: Marks that are too similar to existing trademarks are confusing and can create legal disputes. The USPTO rejects applications that are deceptively similar to registered marks.
Subject Matter Requiring Distinctiveness:
Descriptive Terms: Descriptive terms characterize a product or service’s quality, feature, or use. These can only be registered on the Principal Register after gaining distinctiveness through continuous use in commerce.
Surnames: Marks that are primarily surnames must acquire secondary meaning to be eligible for protection.
Geographical Names: Geographical names, whether from the U.S. or abroad, also require distinctiveness before securing registration.
Strategies to Assess a Mark’s Availability
Comprehensive Searches: Performing extensive searches across databases is crucial. This includes USPTO databases, state registries, domain name records, business directories, and international sources. Consider marks that are phonetically similar, have alternative spellings, or share similar translations.
Competitive Market Research: Understanding how competitors position themselves is critical. This can reveal similar brands in adjacent industries, providing insights on potential risks when entering the same market.
Legal Analysis: A knowledgeable trademark attorney can analyze the results and give you a comprehensive opinion on your mark’s potential availability, providing strategic guidance if conflicts are found.
Risk Management: Evaluate the level of risk acceptable to your business. In some cases, even a potential conflict may be worth addressing if the mark is integral to your branding strategy. But understanding the risks involved helps prepare for any challenges.
Conclusion
Assessing the availability and protectability of a trademark is crucial in avoiding infringement disputes and ensuring your brand’s success. Businesses can identify potential conflicts early through comprehensive searches, reducing the likelihood of litigation while securing a distinctive, recognizable brand identity. Working with legal professionals like Amanda Bynum at AJB Law Firm in Tucson can help streamline this process, guiding businesses through trademark search complexities and ensuring their brands are on a firm legal footing. Whether you’re adopting a new mark or expanding an existing one, a strategic trademark clearance process is essential for protecting your business in today’s competitive landscape.
