Category: Trademark Registration

Trademark Clearance: What Is It And Why It’s Not An Option In The Brand Name Process

Do I need to Do a Trademark Search?

Once a new brand name or names have been selected for consideration for a new product, the next step in the brand naming process is to ensure that the names are available for use and eligible for federal trademark registration. This step is known as “clearance.” The clearance step involves making sure that the names do not infringe third-party trademark rights and are distinctive, thus immediately protectable upon first use.

Clearing marks before product launch is a necessary step and expense. Under U.S. law, courts may find that a trademark owner “willfully” infringed a third party’s trademark rights absent proper clearance. Willful trademark infringement may subject the infringer to statutory damages and plaintiff’s attorneys’ fees. Also, the expense of clearing marks is certainly less expensive than re-branding a product. Believe me, re-branding under these circumstances is not pretty. I’ve witnessed the process…more than once.

Do I need to Do a Trademark Search
U.S. Patent and Trademark Office
The next time you ask the question “Do I need to Do a Trademark Search?” – consider the additional following reasons:

In addition to the reasons mentioned above, here are five other reasons to clear marks:

1. Determines likelihood of product expansion under same trademark. Properly conducted clearance searches should determine the likelihood of product expansion under selected trademarks. In other words, should a trademark owner decide to add complementary product offerings in the future, would the selected mark likely be available for those new offerings or would such use infringe third-party rights?

2. Determines geographic regions in which selected trademark should not be used due to prior users of the same or confusingly similar marks. Trademark rights are geographic in nature. Meaning that trademark owners generally only secure trademark rights in those geographic regions in which marks are used (absent securing federal trademark protection). For example, if a clearance search discovers a user of a selected mark in Chicago (and that use was limited to the Chicago market only), the “newcomer” or “junior user” of that mark may launch a national product under the same or similar mark other than in the Chicago market. That holds true even if the “newcomer” secures a federal trademark registration. Use of the selected mark in the Chicago market by the “new comer” would subject the “new comer” to trademark infringement.

3. Determines whether selected trademarks are weak or strong. Clearance searches should determine whether selected marks are weak – meaning there are many other users of the same or similar marks or term(s) for similar products or the selected marks are descriptive or suggestive of the associated products. The “weaker” the selected mark, the narrower the scope of trademark rights and protection. Weak marks may limit future expansion within the trademark owner’s field of use and, in some instances, may not even be enforceable trademarks. How would you feel if your company spent tens – even hundreds – of thousands of dollars promoting a brand with a brand name that is not legally protectable and worse with a brand name that your competitors may freely use without infringement?

Do I need to do a trademark search

4. Determines whether selected marks have negative connotations in other languages and cultures. How would you like to launch a new product under a brand name that conveys a negative connotation in a foreign language? There have been countless stories of brand name gaffs due to foreign translation and meaning. For example, one of the more well-known branding blunder legends is that of the Chevrolet Nova. As the story goes, the word “no va” means “won’t go” in Spanish. And for that reason, Chevrolet apparently had difficulties, as one might expect, selling the Nova model in Latin America. True or not, the Nova legend amplifies the importance of clearance.

5. Determines whether corresponding domain name is available. One of the first tasks in the clearance process is to see if the selected trademark’s corresponding domain name is available. Or at least check to see what kind of website is in use with the corresponding domain name. During a conversation with a client several years ago about a trademark infringement matter, my client asked that I take a look at her company’s web site. I proceeded by entering my client’s name in the URL window and pressing “enter.” To my surprise, my client did not own the .com generic top-level domain name for its name. Instead, it was being used for a pornographic web site. I instinctively said to my client, “well I guess you don’t own the .com domain name!” She said: “No! We’re at .net.” How many other customers and would-be customers went to wrong site? Don’t let that happen to your company. Don’t be that company.

In addition to the reasons discussed above, there are other reasons to properly clear marks before use. Before launching that next brand, be sure to undertake all necessary steps in the brand name process. What you don’t know may hurt you.

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Do I need to Do a Trademark Search

Why Improper Trademark Selection Can Kill A Brand

Trademarks can be words, letters, shapes, colors, sounds, smells or any symbol or device used to identify the source of products or services. Most importantly, not all trademarks are created equal. Valuable trademarks distinguish competitors, while trademarks that don’t distinguish competitors are not valuable.

Nokia and Motorola are good examples of trademarks that distinguish the source of their associated products. There is no issue of whether consumers would be confused as to the source of Nokia and Motorola products. However, what about the trademarks Whoville Eye Specialists and Eye Specialists of Whoville? Might consumers become confused as to the source of the services offered under those trademarks? What if Whoville Eye Specialists develops a reputation for blinding patients during routine eye laser surgery? Do you think that reputation would affect Eye Specialists of Whoville’s brand? Of course it would. The likely result would be loss of patients, loss of potential patients and loss of revenues.

But why? Because consumers use trademarks to avoid companies with bad reputations and seek out those with good reputations. Under my Whoville example, consumers are likely to mistakenly believe that Eye Specialists of Whoville and Whoville Eye Specialists are either one of the same or somehow associated or affiliated. Either way, both companies’ brands become irrevocably damaged. And that’s unfortunate for Eye Specialists of Whoville who now must either change its name or spend tens of thousands of dollars in a public relations marketing campaign. Do think it might be difficult for Eye Specialists of Whoville to develop brand loyalty with consumers in light of Whoville Eye Specialists’ reputation?

Companies that offer their products at consistent levels of quality and at fair prices can create brand loyalty. The result of creating brand loyalty is repeat business, which is what all companies desire. Why do some companies get repeat business while others do not? McDonald’s® has been very successful at creating brand loyalty, thus repeat business. But how has McDonald’s accomplished that? By offering its products at consistent levels of quality and at fair prices. Consumers know what to expect when they purchase Big Mac® sandwiches in Seattle and Boston. The Big Mac should cost and taste the same in both locations. However, if the cost, and more importantly the taste, of Big Mac sandwiches were different from city to city and location to location, consumers would not be as loyal to the McDonalds brand as they are today.  And that holds true for any product.

Brand loyalty and brand success go hand-in-hand. Strong brand loyalty eventually generates a high level of goodwill for companies and their brands. Goodwill is described as including a company’s reputation in the marketplace. It is inevitably trademarks that will protect the goodwill, reputations and brand images generated by businesses. Do you think companies want trademarks that have little “value” to be “protectors” of their goodwill and reputations? Of course not. So why do many companies ignore the importance of trademark selection? Ignorance, time or money? All three?  What ever the reason, to ignore the importance of selecting “valuable” trademarks can be the difference between product and brand success and failure.