In a rush of excitement to launch a new product or business, it’s easy to forget that selection of a trademark is not the same as naming a baby. It’s easy to understand why you can’t choose a famous trademark like TIFFANY or TIFFANY BLUE. The selection of a great trademark requires investigation, including a federal trademark search. Begin with Step 1 SELECT, of the Brandaide 3-step trademark process.
What then is the best way to perform a federal trademark search and clearance? A federal trademark search usually means paying a professional search firm for a complete search of existing and pending U.S. trademarks, all 50 state registries, trade directories, and now domain registries. However, trademark counsel may also offer in-house search services on a more cost-effective basis using more up-to-date database subscriptions.
If someone with the name “Tiffany” wants to start a jewelry named after herself, she will certainly run into more than a few trademark walls.
TIFFANY and TIFFANY BLUE are just two of the famous trademarks owned by Tiffany. In the case of a famous trademark, it is obvious the trademark is already owned by a third party. Once a mark has been held to be “famous” it is in the “Super Mark” category, able to protect the brand across all types of products and services, including those the company doesn’t typically sell.
Tiffany is also known for its non-traditional color mark, the blue color used for its jewelry boxes and packaging.
Anyone would think twice before opening up a new jewelry store using Tiffany. However, just because a common term is being used by many other people does not mean it’s free for you to use as your brand. More important, the fact that a term is in common use may be an indication that the term is a bad choice and so weak it will never be strong and protectable. Hence, a federal trademark search is an essential step in the selection process.
Here are a few words of advice:
- Search within your industry to narrow the field in an effort to eliminate terms already in use, including terms that are overused and common within a particular trade or industry. The more uncommon a term within an industry, the greater chance of success you’ll have in selecting correctly the first time.
- A successful federal trademark search is a wonderful road map, a guide to navigating the market for your product or service, and to refine and make better your initial selection, presentation, and even assists to formulate a strategy for proper registration. A trademark search also informs strategy for ways to secure protection in ways one might not have otherwise considered without the trademark search.
- Ignorance is not bliss. Modern court decisions have held that failure to conduct a proper trademark investigation before adopting a mark can be used as evidence of bad faith when sued for infringement. In short, if you fail to search and are later sued, don’t count on claiming you didn’t know about someone else’s use to profess innocence.
When it’s time to register a name, use our Consumer Guide to Trademark Service to make a smart choice.
