AIPLA TRADEMARK BOOT CAMP June 10, 2011 Richard C. Gilmore. Analyzing Trademark Search Reports

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1 AIPLA TRADEMARK BOOT CAMP June 10, 2011 Richard C. Gilmore Analyzing Trademark Search Reports I. Analyzing Trademark Search Reports The analysis of a trademark search report should establish whether a mark qualifies for federal registration, as well as, the risk of conflict with third party marks. The analysis of a trademark search report should also aid in determining: (1) the right to use a mark without interference from others; (2) the expected relative strength of the mark; and (3) the likely extent of the right to prevent other later users from using the same or similar mark. A mark cannot be registered with the U.S. Patent and Trademark Office if it is confusingly similar to any existing trademark registrations or pending trademark applications. Importantly, even if the mark is federally registered, a third party with superior common law rights could still successfully challenge your registration and use of the mark. Thus, the risk that a third party may object to your use and/or registration of the mark should be carefully evaluated. For these reasons, it is advisable to conduct a broad trademark search that includes both registered marks and common law uses to determine if the desired mark is being used. This allows the risk of conflict with third parties to be more thoroughly determined. Please keep in mind that conducting a trademark search is not an exact science. It involves various assumptions and judgment calls by the analyst creating the trademark search report. In addition, while many different sources may be searched, no trademark search can include every possible source of common law uses of a mark. Therefore, since no trademark search is perfect regardless of scope, there will always be a certain inherent degree of risk and limitation present in trademark searching. There is also a time delay between when an application is filed with the U.S. Patent and Trademark Office or other authority and the time in which the information is publicly available. In addition, a foreign applicant may file a U.S. application up to six (6) months after the filing of the corresponding foreign application. Because a foreign applicant may assert its foreign filing date as the priority date for the U.S. application, the U.S. application may have a priority date six months earlier than its actual filing date. Similarly, U.S. applications based on Madrid Protocol applications may also claim an earlier filing date. Therefore, there is a risk that others could be using the same or similar mark with superior rights, although these marks may not be identified in even the most comprehensive trademark search. Accordingly, there can be no guarantee that a proposed mark will be available for use and registration under all circumstances.

2 Despite these potential drawbacks, obtaining a trademark search and relying upon the results is an important practice, since such reliance may be used as protection against a claim of willful trademark infringement. II. Content of Trademark Search Reports A trademark search report is typically divided into different sections, which are discussed in more detail below. Each section of the search report typically provides the dates of coverage (where applicable), a summary of the results and the search strategy used by the analyst. The marks the analyst believes to be most relevant are normally listed first, followed by other marks in descending order of importance within each section. It is important, however, that you make your own determination as to the relevance of each of the marks identified in the search report because the most pertinent marks may be buried deep within the report. A. Report Summary The search report may include a summary, such as a graph or a chart, which breaks the report down by section and shows the number of citations in each section. The search report may also rank the citations by relevance as determined by the analyst conducting the search. B. U.S. Patent and Trademark Office Section The U.S. Patent and Trademark Office section contains the search results of the U.S. Patent and Trademark Office records. This section normally includes pending and abandoned applications, as well as any issued, cancelled, or expired registrations. The search typically includes identical marks in all classes and marks that may be considered confusingly similar in classes relevant to the goods or service to be used in connection with the proposed mark. In order to find marks that may be considered confusingly similar, the search report may include marks that are phonetic equivalents, synonyms, spelling variations, plural forms, and other variants. The mark may also be broken down into parts or truncated, and those different parts may be searched and/or rearranged. C. State Trademark Section This is a search of the records of the trademark offices of the fifty states and Puerto Rico. These records are typically searched for identical marks in all classes and for similar marks used in connection with related goods and/or services. D. Web Common Law Section The Web common law search is typically a search of the Internet for the same or similar marks used in connection with the same or similar goods. The Web common law search may include a search of different databases such as YAHOO!, GOOGLE and AMAZON. In addition, the Web may be searched for particular industries such as

3 entertainment, communications, computers, publishing, medicine, pharmaceuticals, electronics and sports. E. Common Law Database Sections The search report may include searches of various databases such as the yellow pages, company directories, fictitious name filings (DBAs), company directories, newspapers, trade journals, court records, tax records, municipal records, credit records, product databases and industry sources to identify common law uses of the mark. The search report may also include a search of business or financial records such as those from DUN & BRADSTREET International, Ltd. These common law sections may identify marks that are not registered anywhere or company names and marks that are no longer in use. Because some common law searches provide very little information about the names or marks found, it is often times necessary to conduct additional research to determine if the names or marks are being used and, if so, whether they are being used as a trademark. III. Analyzing the Search Results When analyzing the results of the trademark search report, it is critical to determine if the proposed mark is likely to cause confusion with any existing marks. More specifically, is the proposed mark likely to cause confusion, in the mind of the average consumer, with any previously used or registered marks? This likelihood of confusion test applies in determining whether a mark is available for use and whether the mark can be registered with the U.S. Patent and Trademark Office. A. The Likelihood of Confusion Test In determining whether a likelihood of consumer confusion exists between the proposed mark and the marks identified in the search report, the term likelihood should be understood to mean that confusion is probable. Likelihood does not mean that confusion has occurred, or that it will occur, but rather that it is more likely than not a reasonable consumer will be confused by the use of the two marks. The term confusion can mean that the goods or services purchased by a customer are different than what the customer intended to buy. For instance, if a consumer wants to purchase goods from the ABC Explosive Co., but mistakenly purchases explosives from the ABD Explosive Co. because of the similarity of the two marks, then consumer confusion has occurred. Confusion can also be created where a misleading mark causes the customer to incorrectly believe that a product or service is sponsored by, approved by, or somehow connected or affiliated with another business. In other words, the customer is confused about the source of the goods or services. For example, if a customer purchases a

4 computer from Google Computers because they believe GOOGLE to be connected or affiliated with the business, then consumer confusion has occurred. Further, in evaluating the likelihood of confusion, the consumer is assumed to be a reasonable consumer that exercises ordinary care in distinguishing between various goods and services. This reasonable consumer does not base purchasing decisions on bizarre reasoning or obsessively checking all details before buying a product or service. Instead, a reasonable consumer is someone in between. B. Frequently Considered Factors in Determining a Likelihood of Confusion In determining a likelihood of confusion, the courts have looked to a number of factors including: 1. Similarity of the marks in sight, sound and meaning; 2. Similarity of the goods and/or services used in connection with the marks; 3. Similarity of the channels of trade through which the goods or services will travel or be sold; 4. The extent to which similar consumers are solicited by both of the marks; 5. The sophistication of the consumer and the consideration given to the purchasing decision; 6. Whether any actual confusion between the marks has occurred; 7. The strength or distinctiveness of the marks (is this a crowded field of similar marks?); and 8. The junior party s intent in selecting its mark (was there any copying?). Whether a mark is likely to create consumer confusion depends upon the facts of a particular case. Thus, different weight and importance may be given to different factors in any given situation. In general, the first three factors listed above are the most important in deciding if there is a likelihood of confusion between two marks. Factor 1: How similar are the marks in terms of appearance, connotation and sound? The closer two marks are in sight, sound and meaning, the more likely that consumer confusion will result. Importantly, spelling and punctuation variations may not matter if the marks have the same sound. In addition, the fact that a mark is in a foreign language may not make a difference if consumers can readily translate the mark. Factor 2: How closely related are the goods and/or services? If the goods and/or services are the same or closely related, then that may favor a finding of a likelihood of confusion. In addition, if the marks are similar and the goods and/or services are distributed in the same markets, then that may also favor a finding of a likelihood of confusion. On the other hand, if the goods or services are completely unrelated, the courts will generally find that there is no likelihood of consumer confusion (unless the

5 existing mark is a famous mark that qualifies for special protection under the dilution doctrine as addressed below). Factor 3: Do the goods and/or services compete in the marketplace? If the goods and/or services directly compete with each other, then the use of the same or similar marks is likely to cause customer confusion. Goods and services are generally considered to be related when they are sold in similar stores, marketed in the same areas or generally considered to be alike by an average consumer. If the marks are being used in the same marketing channels, the likelihood of consumer confusion increases. These three factors are typically applied first, followed by a consideration of the other factors listed above, if there remains any doubt as to whether a likelihood of confusion exists. Of course, one should carefully consider and apply the factors that are most relevant to any given situation, and then use those factors to determine if there is a likelihood of confusion. In addition to analyzing likelihood of confusion, the doctrine of dilution of a famous trademark must also be considered, even in the absence of a likelihood of confusion. Dilution protects owners of famous trademarks against others use of the mark, or a similar mark, in commerce in a way that lessens the distinctive or unique quality of the mark. Dilution applies even where the mark is used for products that do not compete with, or have little connection with, the products of the trademark owner. Thus, a second inquiry must be conducted to determine if the proposed mark caries any risk of diluting the distinctiveness of a famous mark. C. Analyzing Federal Registrations Analysis of the search report should begin with a review of the marks listed in the U.S. Patent and Trademark Office section, since an exact or close hit or match can easily doom a proposed mark. First, carefully review the results for any marks that are identical or very similar to the proposed mark and then vigilantly consider the factors listed above to determine if there is a likelihood of confusion. This may involve many questions such as: Are the marks identical? How close is the resemblance between the two marks? Do the marks sound alike? Do the marks mean the same thing? What is the commercial impression created by the marks? Second, consider how closely the goods and/or services are related. Specifically, whether the goods and/or services may be advertised in the same sources, sold through the same marketing channels, or sold to the same customers. Third, keep in mind other factors such as how strong or distinctive the mark. Courts typically accord a much higher degree of protection to well-known, distinctive marks such as APPLE, EXXON and XEROX, rather than descriptive marks such as EASY CAR RENTAL. Another factor to consider is the cost of the goods and/or services. There may be a greater potential for confusion in the case of inexpensive products that customers are more likely to purchase on impulse than more expensive

6 products that customers may carefully consider before making a purchasing decisions. Further, if the mark is being used on a variety of goods and services by the same party, then confusion may be more likely because customers are likely to think a new use of the mark is simply an extension of the existing brand. Finally, consider who owns the mark and how aggressively they may defend their mark. For example, look at whether the mark is also the name of the company or if a company has a reputation for litigating trademark issues. D. Analyzing State Registrations The state trademark section of the search report should be reviewed using the same approach as the federal section of the search report. Keep in mind, however, that state trademark registrations are normally used by local businesses within the state, which tend to be smaller and may not be engaged in interstate commerce. State trademark registrations may also be used by businesses that do not otherwise qualify for federal registration. However, if the mark is intended to be used in that state, advertised nationwide, or used to sell goods or services over the Internet, pay particular attention to these state trademark registrations. While rights conferred by a state trademark registration may be limited to a particular state, the owner of the registration may still have common law rights in other areas based upon use of the mark in commerce. Therefore, it may be necessary to investigate whether such common law rights exist. E. Analyzing Web Common Law Marks The Internet has become an increasingly important source for identifying common law uses of a mark. Therefore, the Internet should be carefully searched for such common law uses. The information on the Internet, however, is always changing and information that is available one day may be gone the next. Thus, the search report is only a sampling of the information that is available at the time the search report was prepared and it could change at any time. The likelihood of confusion factors discussed above also apply to marks identified in the Web common law section of the search report. However, if any marks of interest are identified, more research may need to be conducted to determine if the mark is currently being used as a trademark. F. Analyzing Common Law Database Sections Although the common law database section of the search report may identify various company names and other marks listed in business directories, trade journals, credit reporting services and other product databases, many of these marks may not be registered at either the federal or state level. In addition, this section of the search report may provide very little relevant information with respect to each of the marks.

7 Accordingly, it may be necessary to conduct additional research to determine who owns these marks, whether the marks are currently in use, and what types of goods and/or services are used in connection with the mark. IV. What If There Is a Conflict? After evaluating the search report, you should be able to determine the risk of conflict with the marks identified in the search report. Although you may not be able to assign a precise number to the amount of risk, you should be able to characterize the risk as being low, moderate, high or significant. Then, depending upon your risk tolerance, you can decide whether to use the mark or select a different mark. V. Registration with the U.S. Patent and Trademark Office The Examining Attorney at the U.S. Patent and Trademark Office will conduct a search of the Trademark Office records to determine if there is a likelihood of confusion with the proposed mark. The Examining Attorney will also review the proposed mark to ensure it meets certain criteria for registration. For example, the mark may be refused on the grounds that the mark is the generic name of the goods or services; is merely descriptive; is geographically descriptive; contains immoral or scandalous matter; or is primarily merely a surname. In addition, the Examining Attorney may reject the application if the mark does not function as a trademark or if the mark is merely informational, functional, ornamental or decorative. VI. Expected Strength of the Mark The analysis of the search report should also indicate whether there are other similar marks that may limit the potential strength of the proposed mark, or if the mark is unique and distinctive because no other third parties are using a similar mark. The strength of the mark may indicate the ability to enforce the mark against subsequent users of similar marks. Analzying Trademark Search Reports - AIPLA Trademark Boot Camp 2011

8 Mr. Gilmore is a founding partner of Maschoff Gilmore & Israelsen in Park City, Utah. He is involved in all aspects of intellectual property law, with a focus on the preparation and prosecution of trademark and patent applications in the United States and foreign countries. He represents large and small clients from a diverse range of industries, and often works directly with in-house counsel to develop and maintain their worldwide trademark and patent portfolios. With regard to trademark law, his practice includes a full range of trademark services including clearance, opinions, licensing and representing clients before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.