Any business person contemplating a new product or changing an existing product and renaming it should be interested in trademark searching. Yet it never ceases to amaze me, many people ignore this basic business activity and pick a name without determining whether it is actually available for use. The growing number of Internet domain names and products exacerbates the trademark failure possibilities.
Some business researchers tell me that trademark searches, like patent searches, are part of the legal realm and best left to a legal searcher. It is true that both trademarks and patents are intellectual property and governed by applicable intellectual property laws. It is not true that only legal researchers should touch the keyboard for trademark searching. Having said that, I must also add that a definitive trademark search should probably be done by an expert in the field.
I believe, however, that business searchers have many legitimate reasons to search trademark databases. A preliminary trademark search to eliminate obvious trademark problems is easily within the purview of the non-legal searcher, as long as the recipient understands that it is only indicative, not comprehensive. If no obvious problems are uncovered, the business searcher should stress that the results do not guarantee a lack of problems, simply that no obvious problems were found. In other words, the business searcher is gathering enough data to refer the trademark search to an expert legal searcher. Business searchers can also monitor databases for potential trademark violations. And it is possible to use trademark searches to gather competitive intelligence, using competitor company names as the access point.
MAKING IT KLEER?
The biggest problem business searchers unfamiliar with trademarks face is understanding trademarks' tricky nature. Trademarks are creative. To trademark experts, clear, kleer, cleer, and klear are equivalents, as are cyberspace, syberspace, cyber space, syber space, even sighber space or sigh brrr space. Intervening words can also be a factor. BabyGo could be seen as too similar to Baby on the Go, Baby A Go Go, or Go Baby Go.
Embedded words can be another problem. Green Living and LivingGreen are too close for comfort. Sound-alikes, puns, coined terms, fanciful names, and all types of variant spellings are common. Remember the Lexus automobile? The LEXIS database people objected and took Toyota to court over the name. Funny, they never worried about a possible confusion between NEXIS and the shampoo Nexxus.
There are more complications. Trademarks can also involve stylized letters, design elements, and color. Think of the backwards "R" in Toys 'R Us or the special script Coca Cola uses for its red or white letters, described in its trademark registration as "the lower portion of the 'C' beginning the word 'Coca' extended under the entire word, in the form of a dash, and the top of the 'C' beginning the word `Cola' extended over the letters following in the form of a dash."
WHAT TO EXPECT
Not all the trademark databases include an actual picture of the image. Most don't. Plus, not every trademark has an accompanying image since not all trademark owners specify the shape of the letters or the color scheme in their trademark registration statement. When images are important for the trademark being researched, you must describe in words the graphics inherent in the design. This is not easy and may be better left to a legal searcher more familiar with this type of searching.
Producers of trademark databases have tended to offer their files on boutique hosts (frequently their own), rather than on the major services, to accommodate the variations inherent in trademark searching. Right-hand truncation, sound-alike search algorithms, and image searching do not exist on most online hosts used frequently by business searchers. CD-ROMs are also a popular distribution method for trademark information for many of the same reasons, plus their attractive cost structures. …