(Updated July 22, 2022)
When making the decision to register a federal trademark with the United States Patent and Trademark Office (“USPTO”), it’s important to evaluate whether that registration will be successful. In order to evaluate the likelihood of success, Harbour Business Law begins with a basic Trademark Knockout Search (“TKO”). This is a simple yet informative search, alerting you to possible legal issues, as well as practical considerations that might surround your prospective trademark.
A TKO is a basic, initial screening search done to help determine whether the trademark you wish to use is “knocked out” from being a mark that you can lawfully use, that is, one that you can use without infringing on the trademark rights of any other business, and therefore one that you can lawfully register as a federal trademark with the USPTO. For example, if a mark you desire (or a confusingly similar variation of it) is already being used by a third party as a trademark for any goods or services identical to or overly similar to your intended or current use, then you cannot use or register the mark (unless there are extraordinary circumstances, such as where we can prove that the use claimed is a sham or clearly abandoned).
Additionally, we do examine practical matters such as whether the domain name is available, as well as desired social media handles. If someone were to look for your company based on your trademark, but a Facebook page by the same or similar name comes up instead of your page, your brand could be damaged and your business unwittingly diverted.
Be aware that there are limitations associated with a TKO because it is just that, a basic “knockout search,” which provides a reasonable, but by no means conclusive, level of confidence for the legally safe adoption and use of the mark. Being a very basic search, it could miss critical information that a more comprehensive search might unveil. Additionally, if the initial review of the TKO gives you the green light to continue pursuing the desired trademark, a greater level of confidence regarding legal safety, non-infringement, and registrability of your desired mark can be achieved by obtaining a more comprehensive trademark search.
The Comprehensive Trademark Search:
Obtaining a more comprehensive trademark search will minimize the risk that there is another company with prior trademark rights either in your mark, or in a mark confusingly similar, used for goods or services identical or confusingly similar to your goods or services, which the basic TKO could not find.
If such an entity exists and has prior rights in your mark, or in a mark confusingly similar, and uses it for goods or services identical or confusingly similar to your goods or services, then that entity could very well force you to stop using that mark, or at least prevent you from getting the significant legal and business advantages of registering your mark with the USPTO, as well as from using your mark in that entity’s geographic market.
These most unfortunate consequences are possible even if such an entity has not registered its trademark with the USPTO, because under the first-to-use doctrine, when a business demonstrates that it was the first to use a trademark in a particular geographic area, and no one else has previously registered an identical or confusingly similar trademark, then that business has exclusive priority to the use of the trademark in that area for the goods or services it offers using that mark, as well as reasonably related goods or services.
Such a business can also force others to stop using not only an identical trademark for identical or confusingly similar goods or services, but can also force others to stop using confusingly similar trademarks on identical or confusingly similar goods or services. Hence the Coca-Cola Company stopped another business from using KOKA-KOLA; and the Gallo wine company stopped another business from using GALLO for cheese, because of the close association in consumers’ minds between wine and cheese. There are endless other real-life examples.
The bottom line is that it is better to spend some money upfront to obtain a high level of confidence that the trademark you adopt and build your own brand on is legally safe from being taken down by others, than to spend considerably more money later on in either trying to fight a trademark infringement lawsuit, or in surrendering your trademark and re-branding your goods or services, losing the potentially immense value of all the goodwill that became connected to your mark.
While not even the most comprehensive search can guarantee that every possibly potential or actual trademark concern will be found, obtaining a comprehensive search is the best way to avoid blindly adopting a trademark that is not legally safe. For these reasons, Harbour Business Law always recommends purchasing a more comprehensive search. To obtain such a search, or for additional information on how to best go about registering and protecting your mark, contact Harbour Business Law.
This Blog was written by Founding Attorney, Katelyn Dougherty.
DISCLAIMER: This blog is for educational purposes only and does not offer nor substitute legal advice. This blog does not establish an attorney-client relationship and is not for advertising or solicitation purposes. Any of the content contained herein shall not be used to make any decision without first consulting an attorney. The hiring of an attorney is an important decision not to be based on advertisements or blogs. Harbour Business Law expressly disclaims any and all liability in regard to any actions, or lack thereof, based on any contents of this blog.
