Trademark Searches & Trademark Clearance
&
“Confusingly Similar” Marks …“Oh My!”
Podcast Episode Begins as :45s
Podcast: Play in new window | Download | Embed
Subscribe: Google Podcasts | Stitcher | TuneIn | RSS
Should we conduct a trademark searchIn this podcast, I discuss the importance of U.S. and global trademark searches 
and clearance before trademark launch and trademark search considerations. I also discuss common misconceptions about trademark rights and what constitutes “confusingly similar” trademarks.
Why Do We Clear Marks?
The trademark clearance step involves making sure that the selected marks do not infringe third-party trademark rights and are distinctive, thus immediately protectable upon first use.
Below are five other reasons to clear marks before product launch:
1. Determines likelihood of product expansion under same trademark
2. Determines geographic regions in which selected trademark should not be used due to prior users of the same or confusingly similar marks
3. Determines whether selected trademarks are weak or strong
4. Determines whether selected marks have negative connotations in other languages and cultures
5. Determines whether corresponding domain name is available
Common Trademark Misconceptions
Below is a list of common misconceptions about trademark rights:
- State-issued business names / trademark registrations = right to use
- Domain name ownership = right to use term in domain name as a trademark
- Made up coined mark = right to use the made up term as a trademark
- “I searched the USPTO trademark database and did not find my mark”
- “I searched the USPTO trademark database and my name is available because company “x” abandoned its trademark registration for the same mark”
“Confusingly Similar” Trademarks Means “Source” Confusion
- Test / Standard: Likelihood of consumer confusion as to the source of the parties’ respective goods/services
- It is not confusion as to what the consumer is buying
- Rather, it is confusion as to the source of the goods/services
- Example: The source of a pair of running shoes vs. running pants
“Confusingly Similar” Trademarks – Factors
- Would the average consumer
- reasonably believe that
- the parties’ respective goods/services
- are of the type that would
- originate with the same source?
- Source confusion is the crux of trademark law
To read my full blog post on this topic, click here.
Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”
- Music: “The Returning” by Jeremy Wray – Copyright Jelsonic(jelsonic.com)
- The music is licensed under creative commons attribution license available on the Free Music Archive
- The music contained in this podcast is only a portion of the original; to hear the full version click here
Disclaimer: This podcast is not legal advice. The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting. Full Disclaimer details appear at www.TrademarkTitan.com
Should we conduct a trademark search