What is Trademark Screening and Do You Need It?
Trademark Screening is a clearance search to determine if a candidate trademark is available. It addresses two avoidable issues. First, we want to know whether the USPTO will rejected an application to register the trademark because of a prior registration of the same trademark, or a similar trademark. Second, you should understand whether the candidate trademark is being used without a registration. If it is, then the user may be able to cancel your registration, stop you from using the trademark, and/or sue you for infringement. Registration of a trademark does not cut off the rights of a prior unregistered user.
What are you looking for? What is Confusingly Similar?
Screening is looking for trademarks that are likely to cause confusion when compared with the candidate trademark. The ultimate question is whether consumers will be confused as to the source or sponsorship of the goods or services. The trademark office looks at several factors, referred to as the du Pont factors. The two most important factors are as follows:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The relatedness of the goods or services as described in the application and registration(s)
High-Level Takeaway: A trademark does not need to be exactly the same to cause rejection of an application or result in infringement. It can be spelled differently, or use another word, and still result in refusal to register. Conversely, a trademark that is exactly the same but used for something unrelated may not be an obstacle.
What does the same or similar goods or services mean?
This is a fact-specific question. Consider that the goal is to avoid consumer confusion. If the goods or services typically emanate from the same source, then they may be related.
How Much Does Trademark Screening Cost?
Hartmans Law includes trademark screening as a part of some trademark application fixed fee packages. The fees vary depending on the depth of the search.
Can I Perform Trademark Screening Myself?
We consider trademark screening to be an important step in building a strong brand and avoiding liability for infringement. Trademark law is nuanced. Search tools are complex. It is advisable that a trademark attorney or professional perform the search and analyzing potential conflicts.
Is Google.com Sufficient for Trademark Screening?
Google is a first step when conducting research. I advise clients to check Google and other platforms where their goods/services might be sold or offered. After they have searched, I use professional tools and third-party data providers. Trademark screening routinely uncovers potential unregistered conflicts which deserve consideration.