Once a proposed mark has been chosen, it is always a good idea to have your trademark attorney conduct a trademark search. Even if you are not aware of any competitors or related companies that use the same name it does not mean that there are none. A trademark search will also look for marks that are “confusingly similar” to the mark being searched or are likely to cause confusion in the consuming public. We will discuss the concept of confusing similarity and likelihood of confusion in the context of trademark infringement in a later post.
If you are considering several marks, it may be possible to narrow the field by conducting a quick Internet search using Google or a similar search engine. If that search finds a direct hit, you can quickly move on to your next contender. This strategy can save time and money for when the final options need to have a closer look taken by your trademark attorney.
During the searching process there will again be a difference between descriptive or suggestive marks and fanciful or arbitrary marks. The more descriptive the mark, the more likely it is already in use in some manner by at least one other company. Many times a descriptive or highly suggestive word or phrase may be in use by several different entities across the country for the same or similar goods or services. Each use may be slightly different, thereby allowing each of them to co-exist. In this case, each descriptive mark will have at best a narrow scope of protectability, perhaps limited to the exact mark for your exact services. In some cases, if the mark is being used by several entities, it may be that the mark is also available for your use, but you will not be able to protect that mark from later use by yet another entity. Also, you may be advised that there is risk associated with use of the mark simply due to the number of prior users, any of whom may choose to object to your new use of the mark.
With suggestive marks, the protection is for the mark, or any confusingly similar marks, but not for the “theme” of the mark. For example, a search for the mark“Service with a Heart” for cardiac care services may find several slightly different versions of this mark in use for similar services – “You are the Heart of Our Business; Our Nurses Are All Heart; We Will Handle Your Heart with TLC,” etc. These marks all use the theme of having the word heart in the mark; but they are not likely to be found to be confusingly similar to each other, even for the same services.
The search may also find that the exact mark is used for unrelated services. For example, the mark “Service with a Heart” may be in use for automobile repair services. As these services are completely distinct from cardiac care services, this use of the exact mark should not be confusingly similar. Consumers are not likely to believe that their auto mechanic is now offering medical services. The reverse may also be true. If your medical group has been using “Service with a Heart” it may not be able to stop use of that mark by a new auto mechanic who opens down the street.
The searcher will need to review each of these “hits” to see if there are enough similarities between the marks and/or the services offered to cause problems or if there is room for one more “Heart” mark. This will increase the cost of searching a descriptive or suggestive mark and also shows how the scope of protection may be limited to the specific phrase chosen.
Alternatively, the search for an arbitrary or fanciful mark may take less time as will not involve review of as many “hits.” However you may find that your trademark attorney is worried about a use of the mark in what seems to be an unrelated field. This is because of the broader scope of protection given to arbitrary or fanciful marks. So, while you may be cleared to use “Service with a Heart” for your cardiac unit even though someone else is using “Service with a Heart” for janitorial services that include hospital cleaning, you may find that you are blocked from using “Penguin Care” for your pediatric services if there is use of the word “Penguin” for child-focused services, even if not in the healthcare arena.
So, as you can see, there are many factors to be considered when choosing a trademark. You will need both creative marketing people to create a mark that meets all of your needs and creative legal counsel to provide you with an accurate assessment of the risks, if any, involved in your use of the new mark. Next week we will look at how to register your new trademark.