DPP Home Business Trademark Yourself: Part 1

Tuesday, April 6, 2010

Trademark Yourself: Part 1

The key to protecting business goodwill

After attending several courses emphasizing the importance of branding, Vance selected a mark without first attempting to “clear” the mark. “After I ordered business cards and created letterhead, I found that a big company was already using [the mark I wanted to use].” Having learned her lesson the hard way, the next time around, Vance performed a series of searches—an effort to “clear” a trademark—before she selected “Oh Baby Photography” as a mark.

There are two key steps to “clearing” a trademark for use. The first step involves performing what’s commonly called a “knock-out” search, so called because it can easily knock the trademark that you want to use out of consideration. A knock-out search is performed on the database at the U.S. Patent and Trademark Office (USPTO) website (www.uspto.gov). In the section under Trademarks, you’ll find an option to “Search pending and registered marks (TESS),” which will let you perform a search for registered trademarks, as well as pending trademark applications, that may be identical or similar to the trademark that you want to use for your business.

If, after performing your knock-out search, you find that another business is using the mark you want to use or has already filed an application for the same trademark, don’t despair; it may be possible to use the same mark, provided the current use isn’t likely to be confused with your intended use of the trademark. The fundamental purpose of trademark law is to prevent consumer confusion. However, there’s a risk whenever you use a registered trademark or trademark for which an application has been filed by someone else, and it’s best to assess this risk with your local intellectual-property law attorney, or to go back to the drawing board and try to come up with a different trademark.

Assuming the knock-out search doesn’t reveal an obvious problem, you can proceed to the second step, which is to assess whether any other business is using a similar mark. Trademark rights in the United States are acquired through use (rather than mere registration), and it’s possible that someone else has acquired what are called “common law” rights in the same or similar trademark. Since a knock-out search won’t reveal “common law” usage, the second step involves ordering a comprehensive trademark search. Such a search increases the likelihood that you’ll discover whether someone else has rights in the same or similar mark to the one being cleared. Comprehensive trademark searches may be ordered from companies like Thomson CompuMark (compumark.thomson.com). Unfortunately, the results of this type of search can be daunting even for attorneys who have never seen one. The results, assembled from the database at the USPTO, various states’ corporation databases, databases of Internet domain names and even more readily available sources such as Internet-based searches and even telephone books, can be hundreds (and, depending upon the terms searched, even thousands) of pages.

Ultimately, a comprehensive search serves two purposes. First, it helps ensure that any investment you make in the advertising and marketing of your trademark won’t be wasted because someone has already acquired “common law” rights. I’ve seen more than a few instances where businesses selected a trademark based only on a knock-out search and then found out after starting a major advertising campaign that another business was already using (and had acquired superior rights to) the same trademark. Second, ensuring that no other businesses are using the trademark you want to use can help prevent you from facing a claim that your trademark infringes another business’ trademark.

Once you’ve gone through the process of “clearing” the trademark, the next step is to acquire rights to the trademark. We’ll cover that in the July/August issue of DPP.

Samuel Lewis is a Board-Certified Intellectual Property law specialist and partner at Feldman Gale, P.A., in Miami, Fla., and a professional photographer who has covered sporting events for a quarter century. He can be reached at This e-mail address is being protected from spambots. You need JavaScript enabled to view it or This e-mail address is being protected from spambots. You need JavaScript enabled to view it .


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