A couple of weeks ago, a prospective client called me to ask some basic questions about the federal trademark registration process and its associated costs. We started talking about the trademark he wanted to adopt and the products with which he intended to use the mark. Of course, one of the first things we discussed was the necessity of conducting a comprehensive federal trademark search to learn whether another individual or entity already owns an existing federal registration for an identical or confusingly similar trademark. Not unlike many other clients, he informed me that he had already conducted a search of his mark using the search tool provided by the United States Patent and Trademark Office on its website (www.uspto.gov) and that he fortunately “didn’t find anything.”
I cringe every time prospective clients tell me they “didn’t find anything” after using the Trademark Office’s search tool because I know from experience how weak and unreliable that tool is. This type of search will most often not catch variations of words, common misspellings, novel or intentional misspellings, verb conjugations, etc. The Trademark Office’s search tool is really only for finding identical trademarks, which I always encourage my clients to do prior to hiring me to conduct a more comprehensive federal trademark search to find confusingly similar marks (which is the legal standard for trademark infringement). Clearly, there is little reason for me to perform my search if their search already revealed an obvious obstacle to registering and/or using their trademark.
So, I begin to explain to my prospective client that it really isn’t a good idea to solely rely on the search results generated by the Trademark Office and that a more comprehensive search is something that he should strongly consider. Not surprisingly, he was reluctant to spend the $250 I charge to perform such a search using proprietary software for which I pay an incredibly outrageous subscription fee to use (seriously, it’s highway robbery). As a start-up business, he was operating on a very tight budget and he felt that his clearance search was sufficient. But, after reminding him that a $250 trademark search is at least 100 times less expensive than having to defend a trademark infringement suit (not to mention the money he would waste by filing a trademark application just to be rejected on the basis of another registered mark that would have been revealed in my search), he made the wise decision to spend the $250.
Although I obviously cannot reveal the exact trademark on which I conducted my search due to attorney-client confidentiality, the following situation nicely illustrates what actually occurred with my client’s search. Let’s say hypothetically that my client’s trademark was CLIFF JUMP and that he wanted to use the trademark for classes and seminars in the fields of personal and organizational growth and development. When you type CLIFF JUMP into the Trademark Office’s search system, you get the following screen indicating that no records match the search query:
So, my client was technically correct in that he “didn’t find anything.” He just spent 250 bucks for me to tell him what he already knew, right? Not at all. My more comprehensive search revealed two registrations owned by the same company for the mark CLIFF JUMPING (Reg. Nos. 3672445 and 2761445), both of which are registered for educational services in the fields of personal and organizational growth and development. Unquestionably, the Trademark Office would refuse registration of my client’s CLIFF JUMP mark on the basis that it is likely to cause confusion with these registrations for CLIFF JUMPING. In addition, there is the possibility that the owner of these registrations would challenge my client’s use of the CLIFF JUMP trademark if he commenced use of it in connection with his services. Probably not a winning case for my client, wouldn’t you agree?
I think being told bad news about the results of a trademark search is a bittersweet moment for many people looking to adopt a brand new trademark. Many people who come to me already have their heart set on a particular trademark and are extremely disappointed to hear that their mark is unavailable. But, on the other hand, I think they’re also relieved to know that they didn’t invest thousands of dollars into developing and marketing a problematic trademark. Well, that’s of course assuming they hired a trademark attorney to clear their mark before creating labels, product packaging, websites, signage, business cards, and advertisements.
So, it’s back to the drawing board for my client, which maybe is not such a bad place to be considering where he could have been had he imprudently chose to rely on the search he conducted himself.