If you’re in the beginning stages of a startup, you might already have a pretty good idea of what you want your mark to be. In fact, you might be 100% certain that the mark you have now is the one you want to register. Or, perhaps you’re in the initial stages of creating your mark and are just brainstorming ideas. In either case, the concepts discussed here are the same ones that the U.S. trademark office examining attorneys apply when examining your trademark registration application to determine whether your mark may be registered.
In this two-part series, we’ll try to help you figure out whether and how you can (1) register your mark with the trademark office and (2) enforce your rights once the mark is registered.
The first thing we need to do is remind ourselves what a trademark is and what it does. A trademark is generally a word, phrase, slogan, symbol, or design, or combination thereof, that identifies the source of your goods and services and distinguishes them from the goods and services of another party; that is, a trademark lets consumers know that the goods and services come only from you and not from someone else.
How do “identifying source” and “distinguishing source” play into selecting a mark? First, let’s look at the concept of “likelihood of confusion.”
Essentially, a “likelihood of confusion” exists when (1) the marks of the parties are similar and (2) the goods and services of the parties are related in such a way that consumers are likely to believe they come from the same source. That is, the marks look alike, sound alike, have similar meanings, or create similar overall commercial impressions. And the goods and services are identical or are related in such a way that consumers would be likely to assume that only one company provides all of the goods and services when, in fact, the goods and services come from more than one source. Remember, even identical marks may be registered if used on goods and services that are not related, unless the mark is famous.
Let’s take a look at an example. Let’s say your mark is “B.MARKEY” for “shoes.” Another party has registered the mark “BEE MARQEE” for “shirts.” Here, a likelihood of confusion exists because the marks sound identical and because the goods are related. In particular, when spoken, the marks sound similar. There is no correct pronunciation of a mark, so both marks can be pronounced “B.MARKEY,” even though one party may have intended the mark to be pronounced differently.
With regard to the goods, even though “shoes” and “shirts” are not identical, they are related because consumers are accustomed to seeing both “shoes” and “shirts” being made by the same companies. So, when you are selecting a trademark for your business, be careful not to select one that causes a likelihood of confusion with another mark. Your application will be rejected by the trademark office and you could open yourself up to an infringement law suit by the owner of the other mark.
Instead, it’s safer to do a search for similar marks that are used on related goods and services before filing. This is called a “clearance search” and involves searching federal and state trademark registration databases. It also involves a search for common-law unregistered trademarks by searching the Internet for websites and articles involving similar marks being used for goods and services related to yours.
Selecting a mark that avoids a likelihood of confusion will go a long way toward making sure your mark “distinguishes the source” of your goods and services.